Case Details
- Citation: [2011] SGHC 176
- Title: Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd
- Court: High Court of the Republic of Singapore
- Date of Decision: 26 July 2011
- Judge: Chan Seng Onn J
- Case Number: Suit No 9 of 2010
- Coram: Chan Seng Onn J
- Plaintiff/Applicant: Ferrero SPA
- Defendant/Respondent: Sarika Connoisseur Cafe Pte Ltd
- Counsel for Plaintiff: M Ravindran, Sukumar Karuppiah and Justin Blaze George (Ravindran Associates)
- Counsel for Defendant: Tan Tee Jim SC and Zechariah Chan Jin Han (Lee & Lee)
- Legal Areas: Trade Marks and Trade Names; Tort (Passing Off)
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); references also noted to the previous edition of the Trade Marks Act and the UK Trade Marks Act
- Key Statutory Provisions: s 2(1) (definitions of “sign” and “trade mark”); s 27(2)(b) (infringement of registered trade mark); s 55(2) and s 55(3) (well-known trade marks); passing off (common law tort)
- Trade Marks at Issue (Class 30): Nutella word mark T04/09636H (registered 15 June 2004); other Nutella trade marks also registered (T73/59592H registered 16 August 1973; T82/01892B registered 16 April 1982)
- Alleged Offending Sign/Use: “Nutello” sign used for a gourmet hot coffee beverage served at the defendant’s cafés (TCC outlets)
- Procedural Posture: Judgment reserved; claims considered across trade mark infringement, well-known trade mark infringement (restraining injunction only), and passing off
- Judgment Length: 54 pages; 28,698 words
- Cases Cited (as provided): [2007] SGIPOS 12; [2007] SGIPOS 9; [2011] SGHC 176 (as listed in metadata)
Summary
Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd concerned whether the defendant’s use of the name “Nutello” for a coffee beverage infringed Ferrero’s registered “Nutella” trade marks and whether it amounted to passing off. The plaintiff, an Italian confectionery manufacturer, owned registered trade marks in Singapore for “Nutella” in Class 30, covering confectionery and chocolate-related goods. The defendant, a Singapore café operator, introduced a beverage served at its outlets under the “Nutello” sign, described in promotional materials as espresso with “lashings of nutella” and served with a cocoa-based hazelnut spread.
The High Court (Chan Seng Onn J) approached the trade mark infringement claim under s 27(2)(b) of the Trade Marks Act with a structured analysis. A key threshold issue was whether the defendant used “Nutello” in a “trade mark sense” (ie as a badge of origin) rather than merely descriptively or decoratively. The court then assessed the statutory elements of infringement: similarity of the signs, similarity of goods/services, and likelihood of confusion. The judgment also addressed the plaintiff’s alternative claims relating to well-known trade marks and the tort of passing off, noting that the relief for well-known trade mark infringement is limited to a restraining injunction.
What Were the Facts of This Case?
The plaintiff, Ferrero SPA, manufactures and sells confectionery goods under internationally recognised brands including “Ferrero Rocher”, “Nutella”, “Kinder” and others. In relation to “Nutella”, Ferrero held multiple registrations in Singapore in Class 30 of the International Classification of Goods and Services. The registrations included a “Nutella” word mark (T04/09636H) and other trade marks (T73/59592H and T82/01892B) covering chocolate spreads and related confectionery products.
The defendant, Sarika Connoisseur Cafe Pte Ltd, operated café outlets under the “tcc – Art Boutique Caffe” brand (later known as “tcc – the connoisseur concerto”, or “TCC”). Its business involved retail food and beverage and wholesale of coffee, cocoa and tea. In August 2007, the defendant launched a new gourmet hot coffee beverage served in a shot glass. The beverage was marketed under the “Nutello” sign and prepared at the defendant’s outlets by its baristas.
In the defendant’s café menu, the “Nutello” drink appeared under “Espresso Specialties”. The menu described the drink as espresso with milk foam and cocoa powder, and importantly, it included “Nutella” chocolate cream spread. The menu copy emphasised the use of “nutella” as a selling point, describing the beverage as “Espresso with lashings of nutella – perfect for cocoa lovers!” Each drink was priced at S$5.60 (excluding taxes and service charge). The defendant’s promotional materials and menus used the “Nutello” name in various representations after the launch.
On 3 December 2009, Ferrero sent a cease-and-desist letter to the defendant objecting to the use of “Nutello” and the accompanying description referencing “Nutella”. Ferrero demanded, among other things, payment of S$50,000 as damages. The defendant requested an extension to respond, but Ferrero refused and commenced the action on 6 January 2010. In July 2010, following an overhaul of the defendant’s drinks menu, the defendant discontinued sales of the “Nutello” drink.
What Were the Key Legal Issues?
The central legal issue for the trade mark infringement claim was whether the defendant’s use of “Nutello” constituted infringement under s 27(2)(b) of the Trade Marks Act. That provision requires, first, that the defendant uses a “sign” in the course of trade without the proprietor’s consent, and that the sign is similar to the registered trade mark and used in relation to goods or services identical with or similar to those for which the trade mark is registered, such that there is a likelihood of confusion.
However, before the court could apply the three-element test (similarity of marks, similarity of goods, and likelihood of confusion), it had to resolve a threshold question: whether the allegedly infringing sign must be used “in a trade mark sense”. In other words, the court needed to determine whether “Nutello” was used as a badge of origin indicating a connection between the defendant’s goods/services and Ferrero, or whether it was used merely descriptively or decoratively (and therefore not “trade mark use”).
In addition, the court had to consider Ferrero’s claims under the provisions on infringement of well-known trade marks (s 55(2) and s 55(3)), which protect well-known marks against confusion and unfair advantage or dilution. Finally, the court had to address the tort of passing off, which turns on whether the defendant’s conduct misrepresents trade origin or connection and causes damage to the goodwill of the plaintiff.
How Did the Court Analyse the Issues?
Chan Seng Onn J began by clarifying the relationship between “sign” and “trade mark” under the Trade Marks Act. The court noted that “sign” is defined broadly to include any letter, word, name, device, brand, label, shape, colour, packaging aspect, or combination thereof. A “trade mark”, by contrast, is a sign capable of graphical representation and capable of distinguishing goods or services in the course of trade from those of other persons. This distinction mattered because counsel for the defendant had referred to “Nutello” as a “mark” even though the statutory language required careful analysis of whether it was used as a trade mark.
The court then focused on the threshold issue: whether “trade mark use” is required for infringement under s 27(2)(b). Relying on appellate authority, the court explained that “trade mark use” refers to use of a sign in a manner indicative of trade origin. The court treated the essence of a trade mark as a “badge of origin”, citing the reasoning that a trade mark indicates a connection in the course of trade between the goods and the proprietor of the mark. Accordingly, if “Nutello” was used for decorative or descriptive purposes rather than as an origin indicator, it would not satisfy the threshold requirement for trade mark infringement.
In applying this concept, the court examined the context in which “Nutello” was presented to consumers. The menu placement under “Espresso Specialties”, the description of the beverage, and the manner in which the name was used in promotional materials were all relevant to whether consumers would perceive “Nutello” as identifying the commercial source of the beverage (and thereby suggesting a connection with Ferrero’s “Nutella” brand) or simply as a descriptive label for a drink containing “Nutella” spread. The court’s analysis emphasised that the inquiry is not abstract; it is grounded in how the sign is used in the course of trade and how it functions in the marketplace.
After addressing the threshold issue, the court set out the statutory elements for infringement under s 27(2)(b). Drawing on authority such as Polo and City Chain, the court reiterated that the plaintiff must establish: (a) similarity of the sign to the registered mark; (b) similarity of goods or services; and (c) likelihood of confusion. The court stressed that these conditions are distinct and that similarity of marks and similarity of goods do not automatically produce likelihood of confusion. It also rejected any “global assessment” approach that would collapse the analysis into a single question; instead, the court treated the elements as separate requirements, with the likelihood of confusion analysis becoming unnecessary if either similarity of marks or similarity of goods is not established.
Although the provided extract truncates the remainder of the judgment, the structure described by the court indicates that it proceeded to evaluate similarity of the “Nutello” sign and the “Nutella” word mark, and then assessed whether the defendant’s beverage services were sufficiently similar to the goods for which the “Nutella” word mark was registered. The court’s reasoning would have required careful attention to the nature of the plaintiff’s registered goods (Class 30 confectionery and chocolate spreads) and the defendant’s services (retail café beverages). The court would also have considered the likelihood of confusion by examining consumer perception, the overall presentation of the sign, and the extent to which the defendant’s use would lead the public to believe that the beverage was authorised, endorsed, or otherwise connected with Ferrero.
For the well-known trade mark claims, the court noted that the relief differs: while injunctions and damages may be ordered for trade mark infringement and passing off, the only relief for well-known trade mark infringement is a restraining injunction. This statutory limitation affects the practical consequences of success under s 55. The court therefore would have analysed whether the “Nutella” marks were well known and whether the defendant’s use fell within the specific categories of infringement under s 55(2) (confusion) and s 55(3) (connection, dilution, and unfair advantage). The passing off claim, in turn, would have required proof of goodwill, misrepresentation, and damage, with the court assessing whether “Nutello” and the accompanying descriptions created a false impression of trade connection.
What Was the Outcome?
The extract provided does not include the final dispositive orders. However, the judgment’s analytical framework shows that the court’s determination depended on whether “Nutello” was used in a trade mark sense and, if so, whether the statutory elements under s 27(2)(b) were satisfied. The court also would have considered whether the well-known trade mark provisions and passing off were made out, bearing in mind the limited remedial scope for s 55 claims.
Practically, the case is significant because it addresses how far a defendant may go in using a name that is phonetically and conceptually close to a registered mark, especially where the defendant’s product contains or references the plaintiff’s branded ingredient. The discontinuation of the “Nutello” drink in July 2010 would also have been relevant to remedies, particularly in relation to injunctions and the assessment of ongoing risk of confusion.
Why Does This Case Matter?
Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd is important for trade mark practitioners because it reinforces the threshold requirement of “trade mark use” in Singapore trade mark infringement analysis. The case illustrates that infringement is not automatic merely because a sign resembles a registered mark; the claimant must show that the defendant used the sign in a manner that functions as a badge of origin. This is particularly relevant in food and beverage contexts, where names may be used descriptively to indicate ingredients, flavours, or thematic associations.
The decision also provides a clear articulation of the statutory structure under s 27(2)(b). By emphasising the distinct elements—similarity of marks, similarity of goods/services, and likelihood of confusion—and rejecting a global assessment approach, the court offers a disciplined methodology for litigants. This is useful for drafting pleadings and for structuring evidence, including consumer perception evidence, menu and packaging comparisons, and expert or lay testimony on market understanding.
Finally, the case highlights the remedial differences between ordinary trade mark infringement and well-known trade mark infringement. Even where a well-known mark is implicated, the court’s power to grant damages may be constrained, with restraining injunctions being the primary remedy. For brand owners, this affects litigation strategy and the framing of claims; for defendants, it informs risk assessment and settlement considerations.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”): s 2(1) (definitions of “sign” and “trade mark”); s 27(2)(b) (infringement of registered trade mark); s 55(2) and s 55(3) (well-known trade marks)
- References noted in metadata: previous edition of the Trade Marks Act; UK Trade Marks Act
Cases Cited
- [2007] SGIPOS 12
- [2007] SGIPOS 9
- [2011] SGHC 176
- The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690
- City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382
- R v Johnstone (as cited for the “badge of origin” principle)
- Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712
Source Documents
This article analyses [2011] SGHC 176 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.