Singapore Court of Appeals found 'Nutello' infringed 'Nutella' trade mark

Colin Ng & Partners explains the implication to businesses.

Sarika Connoiseur Cafe (the Appellant”) is the owner and operator of the The Conoisseur Concerto (“TCC”) chain of café outlets in Singapore. The Appellant promoted and offered for sale a coffee beverage containing Nutella hazelnut spread under the NUTELLO sign. Ferrero SpA (“the Respondent”) successfully sued for trade mark infringement of its NUTELLA trade mark under Sections 27(2)(b), 55(2), 55(3)(a) and 55(3)(b)(i) of the Trade Marks Act (Cap. 332, 2005 Rev Ed) (“TMA”) and for passing off.

The Appellant failed on all points of the issues it raised in the appeal and the decision of the High Court was upheld.

According to Beverly WEE, Associate at Colin Ng & Partners, the Court of Appeal (“CA”) agreed with the High Court that the NUTELLO sign and NUTELLA word mark were visually and aurally similar but did not think that the marks were conceptually similar.

"Since NUTELLA and NUTELLO are invented words, void of meaning and underlying ideas, it would be difficult if not impossible to determine a concept common to the two. The CA also commented that the distinctiveness of the registered trade mark is a factor to be considered when analysing the three aspects of similarity viz. visual, aural and conceptual."

"Given the significant degree of inherent distinctiveness that the NUTELLA word mark possessed as an invented word, the mere alteration of the last letter would not lend support to a finding of dissimilarity."

Here's more from Wee:

In the final analysis, the visual and aural aspects of similarity were considered more important than that of conceptual dissimilarity because only verbalization and recognition of the word-only NUTELLO sign and NUTELLA mark respectively were necessary to purchase products sold under the same. As such, the sign and mark were found to be similar.

The respective goods of parties were also found to be similar as the CA was persuaded by the market survey and Internet blogs evincing consumer perception of the NUTELLO beverage as falling within the ambit of the fairly broad “chocolate products” specification for which the NUTELLA mark was registered.

The CA found that final requirement of likelihood of confusion was made out. In coming to its decision, it considered (i) that the 30% of the relevant public likely to be confused as shown by survey evidence tendered by both parties constituted a substantial portion of the relevant public; and (ii) the similarity between the NUTELLO sign and NUTELLA word mark and the distinctive character of the latter.

IMPLICATION
The CA's affirmation of the High Court's decision is a cautionary tale to businesses of the potential liability in attempting to modify the trade mark of another to become its own. This practice has been observed to be particularly prevalent in, though not limited to, the food and beverage industry. It is good practice for businesses to have a general awareness of the circumstances in which the use of a sign in the course of business can constitute trade mark infringement.