Case Details
- Case Title: Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd
- Citation: [2011] SGHC 176
- 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
- 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: Intellectual Property (Trade Marks); Tort of Passing Off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Provisions Referenced: 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); s 27(2)(b) threshold issue (trade mark use)
- Cases Cited: [2007] SGIPOS 12; [2007] SGIPOS 9; [2011] SGHC 176 (as cited in metadata); 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”); R v Johnstone; Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712 (“Nation Fittings”)
- Judgment Length: 54 pages; 29,130 words
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. Ferrero, the proprietor of registered “Nutella” trade marks (including a “Nutella” word mark), alleged that Sarika’s use of “Nutello” infringed its registered trade mark rights under s 27(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), infringed its well-known trade marks under s 55, and also amounted to passing off.
The High Court (Chan Seng Onn J) approached the case by first addressing a threshold question in trade mark infringement: whether the defendant’s use of “Nutello” was “trade mark use”, ie whether it functioned as a badge of origin rather than being used descriptively or decoratively. The court then analysed the statutory elements for infringement under s 27(2)(b), including similarity of marks, similarity of goods/services, and likelihood of confusion. The judgment also dealt with the overlap between the trade mark infringement and passing off analyses, while recognising that the legal tests are distinct.
What Were the Facts of This Case?
The plaintiff, Ferrero SPA, is an Italian company that manufactures and sells confectionery goods, including the cocoa-based hazelnut spread marketed under the brand “Nutella”. The defendant, Sarika Connoisseur Cafe Pte Ltd, is a Singapore company operating café outlets known as “tcc – Art Boutique Caffe” (later “tcc – the connoisseur concerto”, “TCC”). The defendant’s business includes retail in food and beverage and wholesale of coffee, cocoa and tea.
Ferrero is the registered proprietor in Singapore of multiple “Nutella” trade marks in Class 30 of the International Classification of Goods and Services (“ICGS”). The judgment distinguishes between the “Nutella” word mark and other registered “Nutella” trade marks, but for the s 27(2)(b) infringement claim Ferrero relied only on the “Nutella” word mark registration. The relevant registrations included, among others, T73/59592H (registered 16 August 1973) and T82/01892B (registered 16 April 1982), both covering confectionery and related goods, including chocolate spreads and cocoa-based products.
In August 2007, Sarika introduced a gourmet hot coffee beverage served in a shot glass under the “Nutello” sign. The beverage was prepared at TCC outlets and included espresso, milk foam, cocoa powder, and “Nutella” chocolate cream spread. The defendant’s menu described the drink as “Espresso with lashings of nutella – perfect for cocoa lovers!” and priced it at S$5.60 (excluding taxes and service charge). The drink was featured in the defendant’s “Espresso Specialties” section of its Drinks Gallery Menu.
Ferrero objected to Sarika’s use of “Nutello”. On 3 December 2009, Ferrero issued a cease-and-desist letter demanding that Sarika stop using the “Nutello” name and the associated description. Ferrero also demanded payment of S$50,000 as damages. Sarika requested an extension to respond, but Ferrero refused. Ferrero commenced the action on 6 January 2010. In July 2010, following an annual overhaul of the defendant’s Drinks Gallery Menu, Sarika discontinued sales of the “Nutello” drink.
What Were the Key Legal Issues?
The central legal issues concerned the scope and proof of trade mark infringement under s 27(2)(b) of the TMA, and whether Sarika’s conduct also fell within the broader protections for well-known trade marks under s 55. A further issue was whether Sarika’s conduct constituted passing off, which requires proof of goodwill, misrepresentation, and damage (or a likelihood of damage).
For the s 27(2)(b) claim, the court had to decide a threshold question: whether the defendant must use the allegedly infringing sign “in a trade mark sense” (ie as a badge of origin) before infringement can be found. This threshold issue is critical because not every use of a similar sign in the course of trade amounts to trade mark infringement; the sign must be used in a manner that indicates trade origin.
Assuming trade mark use was established, the court then had to determine whether Ferrero proved the three statutory elements for infringement: (a) similarity of marks; (b) similarity of goods or services; and (c) likelihood of confusion on the part of the public. The court also had to consider how these elements relate to, and differ from, the passing off analysis, particularly where the same factual matrix supports multiple causes of action.
How Did the Court Analyse the Issues?
Chan Seng Onn J began by structuring the analysis of the trade mark infringement claim under s 27(2)(b). The court emphasised that the statutory test is not a single “global assessment” of confusion; rather, it is built on distinct elements. Citing the Court of Appeal’s approach in Polo and City Chain, the judge noted that the likelihood of confusion need not be considered if either similarity of marks or similarity of goods/services is not satisfied. This reflects a disciplined statutory approach: the court must work through the elements rather than collapsing them into one inquiry.
Before addressing similarity and confusion, the court tackled the threshold issue of “trade mark use”. The judge explained that the starting point is the statutory definition of “trade mark” in s 2(1) of the TMA. A trade mark is a sign capable of distinguishing goods or services provided by one person from those provided by another. Accordingly, “trade mark use” refers to use that is indicative of trade origin—essentially, use that operates as a badge of origin. The court relied on the conceptual foundation that the essence of a trade mark is to indicate trade source, drawing on the reasoning in R v Johnstone (as cited in Nation Fittings).
Applying this principle, the judge considered whether Sarika’s use of “Nutello” was primarily descriptive or decorative rather than functioning as a trade mark. The court observed that where a sign is used for decorative or descriptive purposes, it may fall outside “trade mark use”. In City Chain, for example, the Court of Appeal found that the predominant use of the allegedly infringing sign was decorative, and therefore did not amount to trade mark use. The High Court treated this as a key guide: the court must examine the manner and context of the defendant’s use, including how consumers are likely to perceive it.
In the present case, the “Nutello” drink was marketed through menus and promotional materials. The menu described the beverage as espresso with “lashings of nutella”, and the drink was positioned under “Espresso Specialties”. The court’s analysis (as reflected in the excerpt) shows careful attention to the statutory meaning of “sign” versus “trade mark”. The judge noted that “sign” is broadly defined in the TMA to include any word, name, label, packaging aspect, and combinations thereof. “Nutello” was therefore properly treated as a “sign”, and the question became whether it was used as a trade mark (ie as an indicator of origin) or merely as a name for a beverage in a descriptive sense.
After addressing trade mark use, the court would proceed to the three elements under s 27(2)(b). The excerpt indicates that the judge intended to analyse similarity of marks, similarity of goods/services, and likelihood of confusion separately, while also recognising that these elements overlap in practice. The judge also clarified that the “global assessment test” for confusion had been rejected in Polo, reinforcing that the court must not assume confusion simply because marks and goods are similar.
Although the provided extract truncates the remainder of the judgment, the structure described by the judge suggests that the court would compare “Nutello” with Ferrero’s “Nutella” word mark, assess whether the defendant’s beverage (coffee with cocoa and Nutella spread) fell within the scope of “similar goods or services” to Ferrero’s registered confectionery products in Class 30, and then determine whether the public was likely to be confused. The court also noted that the well-known trade mark claim under s 55 has a narrower remedial scope (restraining injunction only), and that the passing off claim, while overlapping factually, is governed by different legal requirements.
What Was the Outcome?
The excerpt provided does not include the court’s final dispositive orders. However, the judgment’s framing indicates that the court’s decision turned on the threshold “trade mark use” issue and the statutory elements for infringement under s 27(2)(b), followed by consideration of the well-known trade mark and passing off claims. The discontinuation of the “Nutello” drink in July 2010 would likely have affected the practical relief sought, but it would not necessarily eliminate liability for past infringement or passing off.
In trade mark disputes of this type, the practical effect of the outcome typically includes whether Ferrero obtained injunction relief and/or damages, and whether the court granted restraining relief under the well-known trade mark provisions. The judgment’s emphasis on the distinct statutory elements suggests that the court would have been cautious about extending trade mark protection to uses that are not perceived as badges of origin.
Why Does This Case Matter?
Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd is significant for practitioners because it illustrates the importance of the threshold requirement of “trade mark use” in Singapore trade mark infringement analysis. Even where a sign is visually or phonetically similar to a registered mark, infringement under s 27(2)(b) requires that the sign be used in a manner indicative of trade origin. This is a doctrinal safeguard against overextending trade mark rights to uses that are descriptive, decorative, or otherwise not functioning as a badge of origin.
The case also reinforces the structured statutory approach to s 27(2)(b) infringement. By relying on Polo and City Chain, the court emphasised that similarity of marks, similarity of goods/services, and likelihood of confusion are distinct elements. The likelihood of confusion analysis is not a free-standing “global assessment” once the first two elements fail. This matters for litigation strategy: evidence and submissions must be directed to each element, and failure to establish similarity can be fatal without needing to prove confusion.
For brand owners, the case highlights the need to show not only resemblance but also the functional role of the defendant’s sign in the marketplace. For defendants, it provides an analytical pathway to argue that the sign is used as a product name or descriptive reference rather than as an indicator of origin. For law students, the judgment is a useful example of how Singapore courts interpret the TMA’s definitions and apply them to real commercial contexts such as menu listings and promotional descriptions.
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; similarity and likelihood of confusion)
- s 55(2) (well-known trade marks; confusion-based infringement)
- s 55(3)(a) (well-known trade marks; connection likely to damage interests)
- s 55(3)(b)(i) (dilution in an unfair manner of distinctive character)
- s 55(3)(b)(ii) (taking unfair advantage of distinctive character)
Cases Cited
- 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
- Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712
- R v Johnstone (as cited in Nation Fittings)
- [2007] SGIPOS 12
- [2007] SGIPOS 9
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.