Monday, February 11, 2013

A nutty Singapore court decision

IP Komodo doesn't focus much on issues in the city state because it is a sophisticated well developed IP jurisdiction. But there are some cases so sweet you cannot ignore them. Or perhaps it is just their susceptibility to puns.

Sarika Cafe launched a hot chocolate beverage served in a shot glass under the 'Nutello' sign, which contained espresso, milk powder, cocoa powder and Nutella spread. It was described as  “An Espresso with lashings of Nutella - perfect for cocoa lovers!” Ferrero, owners of the NUTELLA brand sued in the High Court and on appeal.

The courts both held marks were visually and aurally similar. The goods were similar (the product even had Ferrero's spread as an ingredient). Survey evidence showed a 30% level of confusion. If one took a holistic approach, confusion seemed likely. There was well known infringement because the misrepresentation caused damage so dilution through blurring was found. There was also passing off. Damage didn't necessarily mean lost money, but lost future opportunities too. 

All in all an excellent comprehensive textbook analysis of trademark and passing of rules. Or put another way the decision is a delicious analysis of similar mark - similar goods confusion. Along with a tasty determination on well known trademark law. A very satisfying concoction of trademark principles.

A more detailed report on the case from Singapore IP firm One Legal, in World Trademark review is here.

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