Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA

"The comparison to be made is one of “mark for mark”. Each mark must be considered as a whole without any external matter being taken into account." — Per Chao Hick Tin JA, Para 17

Case Information

• Citation: [2012] SGCA 56 (Para 1)
• Court: Court of Appeal of the Republic of Singapore (Para 1)
• Decision Date: 16 October 2012 (Para 1)
• Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA; VK Rajah JA (Para 1)
• Counsel for Plaintiff/Appellant: Tan Tee Jim S.C., Zechariah Chan Jin Han and Jeremiah Chew (Lee & Lee) (Para 1)
• Counsel for Defendant/Respondent: M. Ravindran, Sukumar Karuppiah and Justin Blaze George (Ravindran Associates) (Para 1)
• Case Number: Civil Appeal No 102 of 2011 (Para 1)
• Area of Law: Trade marks and trade names; tort of passing off (Para 1)
• Judgment Length: Approximately 50+ paragraphs in the extracted text; the full judgment is substantially longer than the excerpt provided (Paras 1-22)

Summary

This appeal concerned whether Sarika Connoisseur Cafe Pte Ltd’s use of the sign “Nutello” for a coffee beverage infringed Ferrero SpA’s “Nutella” trade marks and amounted to passing off. The Court of Appeal noted that the Appellant had introduced the “Nutello” beverage in its cafes, described it in promotional material as “Espresso with lashings of nutella – perfect for cocoa lovers!”, and that the Respondent objected by cease-and-desist letter before commencing suit. The High Court had found infringement under s 27(2)(b), infringement and dilution under s 55, and passing off, and had granted injunctions and ordered damages to be assessed. (Paras 4-10)

On appeal, the Court set out the governing approach to trade mark similarity under s 27(2)(b), reaffirming that the inquiry is “mark for mark” and that each mark must be considered as a whole without external matter. It also explained that visual, aural and conceptual similarity are relevant, but not all must be established, and that the distinctiveness of the registered mark is a factor within that analysis. The Court further identified the issues on well-known mark protection and passing off, including whether dilution in an unfair manner was made out and whether actual damage had to be shown for passing off. (Paras 11-20)

The excerpt provided does not include the Court’s final conclusions on each issue, but it does show that the Court was careful to distinguish between the statutory bases of infringement, dilution, and passing off, and to anchor the analysis in established Singapore and comparative authorities. The judgment also clarifies that the “Nutello” sign was not identical to the “Nutella” word mark, and that the relevant consumer is the average consumer who is reasonably well-informed and reasonably observant and circumspect, taking into account imperfect recollection. (Paras 15-20)

What Were the Facts Giving Rise to the Dispute?

The Appellant operated a chain of cafes under the name “tcc – the connoisseur concerto” and sold gourmet coffee beverages. On 1 August 2007, it introduced a new hot coffee beverage served in a shot glass under the “Nutello” sign. The beverage contained espresso, milk foam, cocoa powder and Nutella spread, and was listed in the “Espresso Specialties” section of the menu. The menu description read: “Espresso with lashings of nutella – perfect for cocoa lovers!” (Paras 2, 4)

The Respondent was an Italian company manufacturing and retailing confectionery, including the cocoa-based hazelnut spread marketed as “Nutella”. It was the registered proprietor of the “Nutella” marks in Class 30 of the International Classification of Goods and Services in Singapore. The judgment states that the Court referred to the first mark as the “Nutella” word mark and to all three marks collectively as the “Nutella” trademarks. (Para 3)

On 3 December 2009, the Respondent sent a cease-and-desist letter objecting to the Appellant’s use of the “Nutello” sign and the menu description, and demanded damages of S$50,000. The Appellant sought an extension of time to respond, but the Respondent refused and commenced Suit No. 9 of 2010 on 6 January 2010. The Appellant later discontinued sales of the Nutello beverage in July 2010, said to be due to an annual menu overhaul. (Paras 6-8)

What Did the High Court Decide?

The Court of Appeal recorded that the High Court judge held the Appellant had infringed the “Nutella” word mark under s 27(2)(b) because there was similarity of marks and goods and a likelihood of confusion. The Judge also held that the “Nutella” marks were well known to both the relevant sector and the public at large in Singapore, and that the Appellant had infringed under s 55(2) and s 55(3)(a), and diluted the marks under s 55(3)(b)(i), though not taken unfair advantage under s 55(3)(b)(ii). Finally, the Judge held that the Appellant had committed passing off by promoting and offering for sale the “Nutello” drink. (Para 9)

As a result, the High Court granted injunctions restraining infringement and passing off, and ordered damages to be assessed. The Court of Appeal noted that this appeal was from that decision. (Paras 9-10)

What Issues Did the Court of Appeal Identify?

The Appellant challenged the High Court’s findings on trade mark infringement under s 27(2)(b), infringement of well-known marks under s 55(2) and s 55(3)(a), dilution by blurring under s 55(3)(b)(i), and the damage element of passing off. The Court framed sub-issues on similarity of the “Nutello” sign to the “Nutella” word mark, similarity of goods, likelihood of confusion, whether dilution in an unfair manner was shown, and whether actual damage had to be proved for passing off. (Para 11)

The Court also noted that the Appellant was not appealing the finding that the “Nutella” trademarks were well known, and the Respondent did not challenge the finding that there was no unfair advantage under s 55(3)(b)(ii). (Para 12)

How Did the Court Approach Trade Mark Infringement Under Section 27(2)(b)?

The Court approved and adopted the step-by-step approach from British Sugar, as previously approved in The Polo/Lauren Co, LP Shop In Department Store Pte Ltd [2006] SGCA 14. Under s 27(2)(b), the Court stated that three conditions must be satisfied in sequence: the sign must be similar to the registered mark; the sign and mark must be used in relation to identical or similar goods or services; and there must be a likelihood of confusion because of the first two conditions. (Para 14)

This framing is important because it shows the Court’s insistence on a structured analysis rather than a global impressionistic test. The Court expressly contrasted this with the European Court of Justice approach in Sabel and Canon, and treated the Singapore approach as conceptually more appropriate to the statutory text. (Para 14)

How Did the Court Explain the Similarity Analysis?

The Court noted that similarity is assessed by considering visual, aural and conceptual similarity, but that all three need not be established. The relative importance of each aspect depends on the circumstances, especially the goods and the type of marks, and the Court emphasised that each case must be viewed in its own context. It also stated that similarity is a question of fact and degree. (Para 16)

Crucially, the Court held that the comparison is “mark for mark”, and that each mark must be considered as a whole without external matter being taken into account. It also identified the relevant consumer as the average consumer who is reasonably well-informed and reasonably observant and circumspect, while cautioning that marks should not be compared side by side in close proximity because consumers rely on imperfect recollection. (Paras 17-18)

The Court further observed that distinctiveness is an important factor in the similarity analysis. It clarified that distinctiveness is not a separate element or a separate aspect of similarity, but rather a factor to be considered within the visual, aural and conceptual analysis. The more distinctive the registered mark, the more difference is needed in the allegedly infringing sign to avoid similarity. (Paras 19-20)

What Did the Parties Argue on Similarity?

The Appellant argued that “Nutello” was visually dissimilar from “Nutella” because of differences in font, typeface, design, and the letters “a” and “o”, and also contended that the differences were more pronounced when the signs were compared as actually used in practice rather than in registered form. The Respondent, by contrast, argued that the Court should look at the length and structure of the marks and assess them as a whole. (Paras 21-22)

The excerpt provided does not include the remainder of the parties’ submissions on aural and conceptual similarity, nor the Court’s final resolution of those arguments. The judgment does, however, make clear that the Appellant challenged the Judge’s findings on visual, aural and conceptual similarity. (Paras 15, 21-22)

What Was the Court’s Treatment of the Well-Known Mark Provisions?

The Court set out s 55(2) and s 55(3) of the Trade Marks Act, which protect well-known marks against use of identical or similar marks in relation to identical or similar goods or services where confusion is likely, and in broader circumstances where use would indicate a connection likely to damage the proprietor’s interests or, for marks well known to the public at large, would cause dilution in an unfair manner. The Court also recorded that the Judge had found the “Nutella” marks to be well known both to the relevant sector and to the public at large in Singapore. (Paras 9, 13)

The excerpt does not include the Court’s final determination on the s 55 issues. It does show, however, that the Court identified the Appellant’s challenge to infringement under s 55(2), damaging connection under s 55(3)(a), and dilution by blurring under s 55(3)(b)(i), while noting that the finding of no unfair advantage under s 55(3)(b)(ii) was not in issue on appeal. (Paras 11-13)

What Did the Court Say About Passing Off?

The Court identified the fifth issue as whether the damage element needed to establish passing off was made out, including whether actual damage had to be shown and whether the Respondent’s expansion into the Singapore drinks industry would be restricted. The High Court had found passing off when the Appellant promoted and offered for sale its “Nutello” drink. (Paras 10-11)

The excerpt provided does not contain the Court of Appeal’s final holding on passing off. Accordingly, the judgment does not address this issue in the provided text beyond identifying it as a live issue on appeal and recording the High Court’s finding. (Paras 10-11)

Why Does This Case Matter?

This case matters because it restates the Singapore Court of Appeal’s structured approach to trade mark infringement under s 27(2)(b), confirming that similarity, similarity of goods or services, and likelihood of confusion are sequential inquiries. The Court’s emphasis on “mark for mark” comparison and on the role of distinctiveness within the similarity analysis provides practical guidance for litigants and advisers assessing infringement risk. (Paras 14, 17-20)

The judgment is also significant because it situates the protection of well-known marks within a broader statutory framework that includes confusion-based infringement, damaging connection, and dilution by blurring. Even in the excerpt provided, the Court’s careful separation of these doctrines shows that a claimant must plead and prove the correct statutory basis for relief, rather than assuming that a finding under one provision automatically establishes another. (Paras 11-13)

Finally, the case is practically important for brand owners in the food and beverage sector because it illustrates how a product name, menu description, and promotional usage can become legally significant when they evoke a famous mark. The facts show that even a beverage name and associated marketing language may trigger trade mark and passing off claims if they are sufficiently close to a registered and well-known mark. (Paras 4-8)

Cases Referred To

Legislation Referenced

• Trade Marks Act (Cap 332, 2005 Rev Ed) — definition of “sign” and “trade mark” in s 2(1) (Para 4)
• Trade Marks Act, s 27(2)(b) — infringement where a similar sign is used for identical or similar goods or services and confusion is likely (Paras 9, 13-14) [CDN] [SSO]
• Trade Marks Act, s 55(2) — protection of well-known trade marks against use causing confusion in relation to identical or similar goods or services (Paras 9, 13) [CDN] [SSO]
• Trade Marks Act, s 55(3)(a) — protection where use would indicate a connection and is likely to damage the proprietor’s interests (Paras 9, 13) [CDN] [SSO]
• Trade Marks Act, s 55(3)(b)(i) — protection against dilution in an unfair manner of the distinctive character of a mark well known to the public at large in Singapore (Paras 9, 13) [CDN] [SSO]
• Trade Marks Act, s 55(3)(b)(ii) — unfair advantage limb, noted as not challenged on appeal (Paras 9, 12-13) [CDN] [SSO]

Source Documents

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

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.