Case Details
- Citation: [2012] SGCA 56
- Case Title: Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA
- Court: Court of Appeal of the Republic of Singapore
- Decision Date: 16 October 2012
- Civil Appeal No: Civil Appeal No 102 of 2011
- Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA; VK Rajah JA
- Judgment Type: Appeal against High Court decision (Suit No 9 of 2010)
- High Court Reference: [2011] SGHC 176
- Plaintiff/Applicant (Appellant): Sarika Connoisseur Cafe Pte Ltd
- Defendant/Respondent (Respondent): Ferrero SpA
- Legal Areas: Trade Marks and Trade Names; Tort — Passing Off
- Key Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed); Trade Marks Act 1994
- Judgment Length: 31 pages; 18,931 words
- Counsel for Appellant: Tan Tee Jim S.C., Zechariah Chan Jin Han and Jeremiah Chew (Lee & Lee)
- Counsel for Respondent: M. Ravindran, Sukumar Karuppiah and Justin Blaze George (Ravindran Associates)
- Issues Raised on Appeal (as summarised in judgment): (i) s 27(2)(b) infringement; (ii) s 55(2) infringement; (iii) s 55(3)(a) damaging connection; (iv) s 55(3)(b)(i) dilution by blurring; (v) passing off damage element
- Notable Procedural/Scope Notes: Appellant did not appeal the finding that “Nutella” is a well-known mark; and did not challenge the finding of no unfair advantage under s 55(3)(b)(ii)
Summary
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA concerned a Singapore café chain’s use of the sign “Nutello” for a gourmet coffee beverage. Ferrero, the proprietor of the well-known “Nutella” trademarks for a cocoa-based hazelnut spread, sued for trade mark infringement and passing off. The High Court found infringement under both the “ordinary” infringement provision for registered marks and the enhanced protection regime for well-known marks, and also found passing off. The Court of Appeal upheld the core findings, confirming that the statutory framework for trade mark infringement and the tort of passing off can operate together to restrain brand misuse in the course of trade.
At the centre of the appeal was whether the “Nutello” sign was sufficiently similar to “Nutella” and whether the relevant statutory tests—particularly likelihood of confusion (for s 27(2)(b)), likely confusion (for s 55(2)), and “damaging connection” or “dilution in an unfair manner” (for s 55(3)(a) and s 55(3)(b)(i))—were satisfied. The Court of Appeal also addressed the passing off requirement of damage, including whether actual damage must be shown and how the respondent’s market expansion into drinks should be treated.
What Were the Facts of This Case?
The appellant, Sarika Connoisseur Cafe Pte Ltd (“Sarika”), is a Singapore company operating a chain of cafés. It sells gourmet coffee beverages and related food and drink items. The cafés were branded as “tcc – the connoisseur concerto” (“TCC”). In its café outlets, Sarika offered a range of coffee concoctions, including a hot coffee beverage served in a shot glass.
On 1 August 2007, Sarika introduced a new gourmet hot coffee beverage under the sign “Nutello”. The beverage’s ingredients included espresso, milk foam, cocoa powder and Nutella spread (among other ingredients). The beverage was listed in Sarika’s “Espresso Specialties” section of its TCC Drinks Gallery Menu. The menu described the beverage as “Espresso with lashings of nutella – perfect for cocoa lovers!” This promotional presentation linked the beverage to the Nutella spread and used the “Nutello” label in various marketing materials.
Ferrero SpA (“Ferrero”), an Italian company that manufactures and sells confectionery, including the cocoa-based hazelnut spread marketed under the brand name “Nutella”, is the registered proprietor of “Nutella” trademarks in Class 30 of the International Classification of Goods and Services in Singapore. Ferrero’s marks were registered for the relevant goods, and the dispute concerned Sarika’s use of “Nutello” in connection with a coffee beverage served in cafés and promoted through menus, booklets and a website.
After Sarika’s introduction of the “Nutello” drink, Ferrero issued a cease-and-desist letter on 3 December 2009, objecting to Sarika’s use of the “Nutello” sign and the menu description. Ferrero demanded damages of S$50,000. Sarika requested an extension to respond, but Ferrero refused. Ferrero then instituted Suit No 9 of 2010 in the High Court on 6 January 2010. In July 2010, Sarika discontinued sales of the “Nutello” beverage, allegedly due to an annual menu overhaul.
What Were the Key Legal Issues?
The appeal raised multiple legal issues under the Trade Marks Act and the tort of passing off. First, Sarika challenged whether it infringed Ferrero’s registered “Nutella” word mark under s 27(2)(b) of the Trade Marks Act. That provision requires, in sequence, (1) similarity between the sign and the registered trade mark, (2) use in relation to identical or similar goods or services, and (3) a likelihood of confusion on the part of the public.
Second, Sarika contested infringement under s 55(2), which provides enhanced protection for well-known trade marks. Under s 55(2), the proprietor of a well-known trade mark may restrain use of an identical or similar mark in relation to identical or similar goods or services where such use is likely to cause confusion.
Third, Sarika disputed the findings under s 55(3)(a) and s 55(3)(b)(i). Section 55(3)(a) addresses use that would indicate a connection between goods or services and the proprietor and is likely to damage the proprietor’s interests. Section 55(3)(b)(i) addresses dilution by blurring, where the use would cause dilution in an unfair manner of the distinctive character of a well-known trade mark. Finally, Sarika challenged the passing off finding, focusing on whether the damage element was made out—specifically whether actual damage had to be shown and whether Ferrero’s potential expansion into the drinks industry should be treated as relevant to damage.
How Did the Court Analyse the Issues?
The Court of Appeal began by reaffirming the structured approach to infringement under s 27(2)(b). It endorsed the step-by-step method articulated in British Sugar plc v James Robertson & Sons Ltd and adopted in Polo/Lauren Co, LP Shop In Department Store Pte Ltd. Under this approach, the court does not treat the inquiry as a single global assessment. Instead, it requires the satisfaction of three conditions in turn: similarity of marks, similarity of goods/services, and likelihood of confusion arising from the first two conditions.
On the first condition—similarity between the “Nutello” sign and the “Nutella” word mark—the Court of Appeal set out the principles governing similarity analysis. The court considers three aspects: visual, aural and conceptual similarity. However, it is not mandatory that all three aspects be present. The relative weight of each aspect depends on the circumstances, including the nature of the goods and the type of mark. The comparison is “mark for mark”, meaning each mark is assessed as a whole without importing external matter. The relevant perception is that of the average consumer, and the court’s task is to determine whether the signs are sufficiently similar to trigger the statutory likelihood of confusion analysis.
Although the High Court had found the marks were not identical, the appeal focused on whether the “Nutello” sign was dissimilar enough to avoid a finding of similarity. The Court of Appeal’s reasoning (as reflected in the judgment’s approach) emphasised that similarity is a question of fact and degree. The court’s analysis therefore required careful attention to how the average consumer would perceive the competing signs in the context of café menus and promotional materials, where consumers may encounter the sign visually and aurally (for example, when ordering) and may rely on imperfect recollection.
Having addressed similarity, the Court of Appeal proceeded to the second condition: whether the “Nutello” sign was used in relation to goods or services identical with or similar to those for which “Nutella” is registered. The High Court had treated the relevant goods/services as sufficiently proximate for the statutory test. The Court of Appeal’s analysis reflected the reality that Ferrero’s “Nutella” is a widely marketed consumer product, and Sarika’s “Nutello” beverage was marketed as a coffee drink incorporating Nutella spread. This factual linkage mattered because it increased the likelihood that consumers would see the beverage as connected to, or derived from, the Nutella brand.
On the third condition—likelihood of confusion—the Court of Appeal applied the statutory logic that confusion is assessed in light of the similarity of marks and the similarity of goods/services. The court’s reasoning recognised that confusion may take different forms, including confusion as to origin, sponsorship, or commercial connection. In the context of a well-known brand, the threshold for confusion may be reached more readily because consumers are more likely to assume that a similar sign used in a related market indicates a connection with the proprietor.
The Court of Appeal then turned to the enhanced protection provisions for well-known marks. It noted that Sarika did not appeal the finding that “Nutella” is a well-known mark. That concession narrowed the dispute. Under s 55(2), the court asked whether Sarika’s use of “Nutello” was likely to cause confusion in relation to identical or similar goods or services. The Court of Appeal’s reasoning aligned with the High Court’s view that the use of a confusingly similar sign in a consumer-facing setting, coupled with the incorporation of Nutella spread in the beverage, was likely to mislead consumers.
For s 55(3)(a), the court considered whether the use would indicate a connection between Sarika’s goods/services and Ferrero, and whether such connection was likely to damage Ferrero’s interests. The analysis focused on the commercial impression created by the “Nutello” branding and menu descriptions. The Court of Appeal’s approach treated “connection” as a broader concept than mere confusion; it includes the likelihood that consumers will believe there is an endorsement, affiliation, or commercial relationship. “Damage” under s 55(3)(a) does not require proof of actual loss in every case, but it requires a real likelihood of harm to the proprietor’s interests, such as dilution of goodwill or impairment of brand value.
For dilution by blurring under s 55(3)(b)(i), the Court of Appeal addressed the concept of dilution in an “unfair manner” and the factual circumstances required to establish blurring. The appeal raised arguments about whether it is conceptually incongruous to find both infringement and dilution, and what is required to show dilution “in an unfair manner”. While the judgment text provided here is truncated, the Court of Appeal’s overall treatment (consistent with the statutory structure) indicates that dilution is concerned with the weakening of the distinctive character of a well-known mark through the spread of its association to other goods or services. In other words, even where consumers may not be fully confused about origin, the distinctive character of the well-known mark may still be harmed if the new use causes the mark’s “brand aura” to become less exclusive.
Finally, the Court of Appeal addressed passing off. Passing off requires goodwill, misrepresentation, and damage. Sarika challenged the damage element, arguing that actual damage must be shown and that Ferrero’s expansion into the Singapore drinks industry would be restricted. The Court of Appeal’s reasoning (as reflected in the issues framed) treated damage as a legal concept that may be established by showing a real likelihood of harm to goodwill, not necessarily requiring proof of actual quantified loss at the time of trial. The court also considered the relevance of Ferrero’s market strategy and potential expansion, recognising that the law of passing off protects not only against current misappropriation but also against the impairment of the proprietor’s ability to exploit its goodwill in related markets.
What Was the Outcome?
The Court of Appeal upheld the High Court’s orders restraining Sarika from infringing Ferrero’s “Nutella” trademarks and from passing off its “Nutello” products as products of, or connected to, Ferrero. The practical effect was to prevent Sarika from continuing to use the “Nutello” sign and related promotional presentation that created the relevant statutory and tortious risks.
The Court of Appeal also affirmed that damages were to be assessed, reflecting that the infringement and passing off were not merely technical breaches but involved conduct capable of harming Ferrero’s trademark rights and goodwill. Even though Sarika had discontinued sales in July 2010, the court’s decision indicates that cessation does not necessarily negate liability for past infringement and passing off.
Why Does This Case Matter?
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA is significant for practitioners because it illustrates how Singapore courts apply both the “ordinary” infringement test for registered marks and the enhanced protections for well-known marks. The case confirms that the statutory step-by-step analysis under s 27(2)(b) remains central, and that courts will scrutinise similarity and confusion in a structured manner rather than relying on a broad, undifferentiated assessment.
More importantly, the decision demonstrates the breadth of protection afforded to well-known marks under ss 55(2) and 55(3). The court’s approach underscores that even where the defendant’s goods are not identical to the registered goods, the likelihood of confusion, damaging connection, and dilution by blurring can be established by the overall commercial impression created by the defendant’s branding and marketing. The incorporation of the proprietor’s product into the defendant’s offering (here, Nutella spread in the “Nutello” beverage) may increase the risk of legal liability because it strengthens the perceived connection to the proprietor’s brand.
For law students and trade mark owners, the case is also a useful study of how passing off damage is treated. The Court of Appeal’s framing of the damage issues indicates that the law does not always require strict proof of actual loss; rather, it focuses on whether the defendant’s conduct is likely to cause harm to goodwill. For businesses, the case serves as a cautionary example: using a sign that is close to a famous brand—even in a context where the defendant claims to be using the proprietor’s product—may still constitute infringement and passing off.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), including:
- Section 2(1) (definitions of “sign” and “trade mark”)
- Section 27(2)(b) (infringement of registered trade mark; similarity and likelihood of confusion)
- Section 55(2) (protection of well-known trade marks; likely confusion)
- Section 55(3)(a) (damaging connection)
- Section 55(3)(b)(i) (dilution by blurring in an unfair manner)
- Trade Marks Act 1994 (as the historical/English equivalent context for comparative reasoning in cited authorities)
Cases Cited
- British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
- The Polo/Lauren Co, LP Shop In Department Store Pte Ltd [2006] SGCA 14
- Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 1999
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117
- Mediacorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR(R) 496
- Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459
- City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382
- Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corporation) [2007] 1 SLR 1082
- Mobil Petroleum Co, Inc v Hyundai Mobis (“Hyundai Mobis (CA)”) [citation as per judgment]
- Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] 2 SLR(R) 669
- [2005] SGHC 175
- [2006] SGCA 14
- [2007] SGIPOS 12
- [2008] SGHC 158
- [2009] SGHC 105
- [2011] SGHC 176
- [2012] SGCA 56
Source Documents
This article analyses [2012] SGCA 56 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.