Singapore Court of Appeals Found ‘Nutello’ Guilty of Infringing ‘Nutella’ Trademark

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Singapore Court of Appeals found ‘Nutello’ guilty of infringing ‘Nutella’ trademark.
Sarika Connoisseur Café (the Appellant) is the owner of the “TCC – the coffee connoisseur” café chain in Singapore. The Appellant came up with a new espresso-based drink called “Nutello”, in August 2007. The drink contained Ferrero SpA (the Respondent)’s chocolate-based hazelnut spread, sold under the trademark “Nutella” as one of its ingredients. Ferrero SpA had 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 Singapore Court of Appeal, found the “Nutello” mark to be confusingly similar to the “Nutella” mark and that, the Appellant have indeed infringed on the Respondent’s famous trademark. “Nutella”, is an invented word which is unique and highly distinctive. The Court of Appeal found that the Appellant’s mark was visually and aurally similar and did not have much differences to differentiate itself from the Respondent’s mark.
Both “Nutella” and “Nutello” are invented words with underlying ideas. The Court of Appeal commented that the distinctiveness of the registered trademark is a component to be taken into consideration when analyzing the three aspects of similarity which are visual, aural and conceptual. Given that “Nutella” is an invented word, just by changing the last letter of it does not mean that it is not the same.…