Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176

Case Details

• Citation: [2011] SGHC 176
• Case 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
• Plaintiff/Applicant: Ferrero SPA (Italy)
• Defendant/Respondent: Sarika Connoisseur Cafe Pte Ltd (Singapore)
• 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 (including 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 27(2)(b) (trade mark infringement); s 55(2) and s 55(3) (well-known trade marks); s 2(1) (definitions of “sign” and “trade mark”)
• Judgment Length: 54 pages; 28,698 words
• Procedural Note: Judgment reserved

Summary

Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd concerned a dispute between a well-known confectionery manufacturer and a Singapore café operator over the use of the name “Nutello” for a coffee beverage served at the defendant’s outlets. The plaintiff, Ferrero SPA, is the proprietor of registered “Nutella” trade marks in Class 30 in Singapore, including a “Nutella” word mark. The defendant introduced a “Nutello” drink in 2007, marketed it through café menus and promotional materials, and described it as espresso with “lashings of nutella” and cocoa-based ingredients.

The High Court (Chan Seng Onn J) addressed multiple causes of action, including trade mark infringement under s 27(2)(b) of the Trade Marks Act, infringement of well-known trade marks under s 55, and the tort of passing off. A central analytical feature of the judgment was the “threshold issue” of whether the defendant’s use of “Nutello” amounted to “trade mark use” (ie, use as a badge of origin rather than merely descriptive or decorative use). The court’s reasoning proceeded through the statutory elements of infringement, emphasising that similarity and use on similar goods do not automatically establish likelihood of confusion.

What Were the Facts of This Case?

The plaintiff, Ferrero SPA, is a company incorporated in Italy that manufactures and sells confectionery goods globally. Its portfolio includes famous brands such as “Ferrero Rocher”, “Nutella”, “Confetteria Raffaello”, “Kinder” (including “Kinder Bueno”, “Kinder Chocolate” and “Kinder Surprise”), “Mon Cheri” and “Tic Tac”. In Singapore, Ferrero is the registered proprietor of multiple “Nutella” trade marks in Class 30 under the International Classification of Goods and Services (ICGS). These registrations cover confectionery and related goods, including chocolate spreads and chocolate-based products.

Ferrero’s “Nutella” trade marks included, among others, a “Nutella” word mark registered in 2004 (T04/09636H) and other related registrations (T73/59592H and T82/01892B) covering confectionery and chocolate cream spread. The court distinguished between the “Nutella” word mark and the other “Nutella” trade marks for analytical clarity, but the infringement claim under s 27(2)(b) was based specifically on the “Nutella” word mark.

The defendant, Sarika Connoisseur Cafe Pte Ltd, is incorporated in Singapore and operates café outlets under the branding “tcc – Art Boutique Caffe” (later “tcc – the connoisseur concerto”, “TCC”). The defendant’s business includes retail food and beverage and wholesale of coffee, cocoa and tea. On 1 August 2007, the defendant launched a new gourmet hot coffee beverage served in a shot glass. The beverage was marketed under the sign “Nutello” and prepared at TCC outlets by the defendant’s baristas.

The “Nutello” drink was featured in the defendant’s Drinks Gallery Menu under “Espresso Specialties”. The menu described the drink as espresso with “lashings of nutella” and indicated that it contained espresso, milk foam, cocoa powder and “Nutella” chocolate cream spread. Each drink was priced at S$5.60 (excluding taxes and service charge). Following the launch, the “Nutello” name was used in various representations in the defendant’s promotional materials, including menus and other marketing materials. On 3 December 2009, Ferrero issued a cease-and-desist letter demanding that the defendant stop using “Nutello” and the associated description, and it demanded 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 Drinks Gallery Menu, the defendant discontinued sales of the “Nutello” drink.

What Were the Key Legal Issues?

The first key issue was whether the defendant’s use of “Nutello” constituted “trade mark use” in the course of trade. Although the plaintiff pleaded trade mark infringement under s 27(2)(b), the court treated “trade mark use” as a threshold requirement. The question was whether “Nutello” was used in a manner indicative of trade origin—ie, as a badge of origin—or whether it was used merely for descriptive or decorative purposes (or otherwise not as a trade mark).

Assuming trade mark use was established, the court then had to determine whether the statutory elements of infringement under s 27(2)(b) were satisfied. These elements required: (a) similarity between the sign used by the defendant and the registered “Nutella” word mark; (b) use of the sign in relation to goods or services identical with or similar to those for which the mark is registered; and (c) a likelihood of confusion on the part of the public. The court emphasised that these conditions are distinct and that the “global assessment test” for confusion had been rejected in the relevant Court of Appeal authority, meaning that likelihood of confusion need not be considered if similarity of marks or similarity of goods was not established.

In addition, the plaintiff pleaded infringement of well-known trade marks under s 55. This required the court to consider whether Ferrero’s “Nutella” marks were well known and whether the defendant’s use of “Nutello” fell within the specific statutory categories: confusion (s 55(2)), indication of connection and likely damage (s 55(3)(a)), and dilution/unfair advantage (s 55(3)(b)(i) and (ii)). Finally, the court had to assess the tort of passing off, which typically requires proof of goodwill, misrepresentation, and damage.

How Did the Court Analyse the Issues?

Chan Seng Onn J began by setting out the statutory framework and the structure of analysis. The court noted that the plaintiff’s claims overlapped in factual content but differed in legal terminology and legal thresholds. To streamline the reasoning, the judgment used cross-referencing across heads of claim. The court also clarified the scope of remedies: while injunctions and damages could be ordered under the trade mark infringement claim and passing off claim, the relief for well-known trade mark infringement was limited to a restraining injunction.

For the s 27(2)(b) infringement claim, the court focused first on the threshold issue: whether the defendant’s use of “Nutello” was “in a trade mark sense”. The judge relied on the Court of Appeal’s treatment of this issue in City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier, which had considered at length whether trade mark infringement requires use as a trade mark. The High Court explained that “trade mark use” is not satisfied merely because a sign is similar to a registered mark; rather, the use must be indicative of trade origin. This flows from the definition of “trade mark” in s 2(1) of the TMA, which describes a trade mark as a sign capable of distinguishing goods or services provided by one person from those of another.

In unpacking “trade mark use”, the court treated the essence of a trade mark as a “badge of origin”. The judge cited the reasoning of Lord Nicholls in R v Johnstone (as quoted in Nation Fittings (M) Sdn Bhd v Oystertec plc), emphasising that a trade mark indicates trade source and connection in the course of trade between goods and the proprietor of the mark. Consequently, where a sign is used for decorative or descriptive purposes, it may not amount to trade mark use. The court’s analysis therefore required careful attention to how “Nutello” was presented to consumers in the defendant’s menus and promotional materials, and whether it functioned as an indicator of origin rather than as a descriptive label for a beverage containing “Nutella” spread.

Although the provided extract truncates the later parts of the judgment, the early reasoning already signals the court’s approach: the judge used the statutory definitions of “sign” and “trade mark” to avoid confusion. The court noted that “sign” is broadly defined in the TMA to include words and other identifiers, while “trade mark” is a sign capable of distinguishing goods or services. The defendant’s counsel had referred to “Nutello” as a “mark”, but the court corrected this by consistently describing “Nutello” as a “sign”, reserving “trade mark” for the statutory concept. This definitional discipline mattered because the threshold issue turned on whether the defendant’s sign was used as a trade mark.

After addressing trade mark use, the court would have proceeded to the three statutory elements of s 27(2)(b). The judge highlighted that similarity of marks and similarity of goods are distinct from likelihood of confusion, and that the court should not collapse these inquiries into a single “global assessment” of confusion. This approach reflects the Court of Appeal’s guidance in Polo and City Chain. Thus, even if “Nutello” and “Nutella” were visually and phonetically similar, the plaintiff still had to show that the sign was used on goods or services identical with or similar to those covered by the “Nutella” word mark, and that the statutory likelihood of confusion requirement was met.

For the well-known trade mark claim under s 55, the court’s analysis would have required a different statutory focus. Rather than requiring the same structure as s 27(2)(b), s 55 provides multiple routes to liability, including confusion, indication of connection with likely damage, and dilution/unfair advantage of the distinctive character. The court would also have had to consider the plaintiff’s burden to show that the “Nutella” marks were well known in Singapore, and that the defendant’s conduct fell within the pleaded statutory categories. Finally, the passing off claim would have required proof of goodwill in the relevant market, misrepresentation by the defendant, and consequent damage to the plaintiff’s goodwill.

What Was the Outcome?

The provided extract does not include the court’s final orders. However, the judgment’s framing indicates that the court treated trade mark use as a decisive threshold issue and then applied the statutory elements of s 27(2)(b) in a structured manner, consistent with Polo and City Chain. The court’s careful distinction between descriptive use and trade mark use suggests that the outcome likely turned on whether “Nutello” functioned as a badge of origin to consumers, rather than merely as a descriptive name for a beverage containing “Nutella” spread.

For practitioners, the practical effect of the decision would be determined by the court’s findings on infringement and passing off, including whether injunctions were granted and whether damages were awarded. The judgment also would have clarified the scope of remedies for well-known trade mark infringement, which is limited to restraining injunctions under the statutory scheme.

Why Does This Case Matter?

Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd is significant for its emphasis on the threshold requirement of “trade mark use” in Singapore trade mark infringement analysis. The case illustrates that even where a defendant’s sign is similar to a registered mark, infringement under s 27(2)(b) requires more than mere resemblance; the sign must be used in a manner indicative of trade origin. This is particularly relevant in consumer-facing contexts such as menus, product naming, and promotional descriptions, where signs may be used descriptively or as part of a culinary description rather than as an origin indicator.

The judgment also reinforces the structured statutory approach to s 27(2)(b). By insisting on distinct inquiries—similarity of marks, similarity of goods, and likelihood of confusion—the court’s reasoning aligns with the Court of Appeal’s rejection of a “global assessment test”. This matters for litigation strategy: plaintiffs must plead and prove each element, and defendants may defeat infringement by undermining any one of the required elements without needing to fully litigate confusion.

Finally, the case is useful for understanding how trade mark law interacts with passing off and well-known trade mark protection. The statutory routes under s 55 (confusion, connection and damage, and dilution/unfair advantage) provide alternative theories that may not require the same proof as s 27(2)(b). For counsel, the case demonstrates the importance of tailoring evidence to each statutory pathway, including evidence of market recognition (for well-known marks) and evidence of consumer perception (for trade mark use and likelihood of confusion).

Legislation Referenced

• Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), s 2(1) (definitions of “sign” and “trade mark”) [CDN] [SSO]
• Trade Marks Act (Cap 332, 2005 Rev Ed), s 27(2)(b) (infringement of registered trade marks) [CDN] [SSO]
• Trade Marks Act (Cap 332, 2005 Rev Ed), s 55(2) (well-known trade marks; likelihood of confusion) [CDN] [SSO]
• Trade Marks Act (Cap 332, 2005 Rev Ed), s 55(3)(a) (well-known trade marks; indication of connection and likely damage) [CDN] [SSO]
• Trade Marks Act (Cap 332, 2005 Rev Ed), s 55(3)(b)(i) and (ii) (well-known trade marks; dilution/unfair advantage) [CDN] [SSO]
• References also noted to the previous edition of the Trade Marks Act and the UK Trade Marks Act

Cases Cited

• [2007] SGIPOS 12
• [2007] SGIPOS 9
• Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176 (as referenced in metadata)
• The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”)
• City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (“City Chain”)
• Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712 (“Nation Fittings”)
• R v Johnstone (as quoted in Nation Fittings)

Source Documents

• Original Judgment (PDF) — Singapore Law Watch
• Archived Copy (PDF) — Litt Law CDN

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.