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Singapore High Court finds ‘Nutella’ to be well known in Singapore.

6 December, 2011

 

Ferrero SPA (“Ferrero”) is the proprietor of various registered “Nutella” trade marks (including the “NUTELLA” word mark and the composite “nutella and device” mark) in Singapore (collectively referred to as the “‘Nutella’ marks”). Sarika runs The Connoisseur Concerto café outlets in Singapore. Sarika had used the name ‘Nutello’ on its drinks menu.

Ferrero recently succeeded before the Singapore High Court in its claim against Sarika Connoisseur Café Pte Ltd (“Sarika”) for (i) trade mark infringement under s 27(2)(b) of the Singapore Trade Marks Act (“TMA”); (ii) relief under s 55 TMA for protection of well known trade marks and (ii) passing-off, all in relation to its ‘Nutella’ marks.
 

The court found that Sarika had used the ‘Nutello’ sign as a trade mark and that the ‘Nutello’ word mark and ‘Nutella’ mark were aurally, visually and conceptually similar. The court took the view that ‘Nutella’, being an invented word, was inherently distinctive, and that Sarika had not made sufficient modification to it such as to render ‘Nutello’ dissimilar to ‘Nutella’.
 

The court also held that the two marks were used on similar goods: the ‘Nutello’ drink was similar to the ‘chocolate products’ specification for which the ‘Nutella’ word mark was registered. In addition, the ‘Nutella’ marks were registered in Class 30, a class which included the category ‘beverages’, thereby encompassing the ‘Nutello’ drink.
 

There was a likelihood of confusion arising out of (a) the similarity of ‘Nutello’ with ‘Nutella’; and (b) the similarity of Sarika’s drink – labeled or marked ‘Nutello’ – with ‘chocolate products’ for which Ferrero had registered its ‘Nutella’ marks. There was a not insubstantial number of the relevant public who was confused. From surveys tendered by each party, about 30% of the relevant public was confused. Whilst the court acknowledged that some discount on that percentage had to be made given the shortcomings on the surveys, it was still held that ‘not insubstantial number’ of the relevant public would be confused.
 

Ferrero consequently succeeded in its claim under for trade mark infringement.
As to Ferrero’s claim for relief for protection of well known trade marks in relation to its “Nutella” marks, the court held that the ‘Nutella’ marks were well known to the public at large in Singapore and that Ferrero’s claim succeeded on the ground of dilution of the distinctiveness of the ‘Nutella’ marks. The court was of the view that, unless Sarika was restrained from using the sign “Nutello”, it was possible that the “Nutella” marks will lose their distinctiveness.

 

However, the claim for taking unfair advantage of the distinctive character of Ferrero’s ‘Nutella’ marks (under s 55(3)(b)(ii)TMA) failed as the court did not find there was sufficient evidence showing that Sarika had gained any advantage from naming the drink ‘Nutello’, let alone unfair advantage.
 

Ferrero’s claim for passing-off was also successful. The court found that the “Nutella” name reached across a large proportion of the public in Singapore and Ferrero therefore enjoyed goodwill in its “Nutella” name, and that the public, which included Sarika’s clientele, would be exposed to Sarika’s use of the name “Nutello” for its chocolate drink – that is, to Sarika’s misrepresentation that “Nutello” had the same source as or was in some way connected with Ferrero. Lastly, the court recognised that Sarika’s use of the “Nutello” sign was likely to restrict Ferrero’s expansion of its line of products in Singapore to the drinks industry and consequently, a likelihood of damage to Ferrero was successfully made out.

 

 

For further information, please contact:

 

Joyce Ang, ATMD Bird & Bird

joyce.ang@twobirds.com

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