DECISIONS ON WELL KNOWN MARKS IN SINGAPORE
Sarika Connoisseur Café Pte Ltd v Ferrero SpA (Court of Appeal) (decision issued on 16
October 2012)
This was an appeal against the decision of the High Court in relation to an action for trademark
infringement and passing off, instituted by Ferrero SpA, the owners of the NUTELLA trade mark
(known for their cocoa-based hazelnut spread), against a Singapore company engaged in the food
and beverage business, in particular a chain of café outlets. Ferrero had trademark registrations for
the word mark NUTELLA as well as the marks
and
(“the NUTELLA marks”) in
respect of items such as chocolate cream spreads, confectionery, chocolate products and chocolate
bars. The appellant introduced a new gourmet hot coffee beverage served in a glass under the
“Nutello” sign in its cafes. The ingredients in the “Nutello” drink comprised espresso, milk foam,
cocoa powder and NUTELLA spread. The “Nutello” beverage was described in the menu as “Espresso
with lashings of nutella – perfect for cocoa lovers!”
The High Court held that the appellant had infringed Ferrero’s NUTELLA word mark as the marks and
goods were similar, resulting in a likelihood of confusion. It also held that the appellant had infringed
the NUTELLA marks which were well known, both to the relevant sector of the public as well as to
the public at large in Singapore (Sections 55(2) and 55(3)(a) of the Trade Marks Act). The appellant’s
actions were found to have caused dilution of the NUTELLA marks under Section 55(3)(b)(i), but no
unfair advantage of the distinctive character of the marks under Section 55(3)(b)(ii) was found.
The issues raised on appeal included whether there had been infringement under the well- known
mark provisions of the Act and whether there had been dilution by blurring.
The Court of Appeal upheld the finding that there was trademark infringement under Sections 55(2)
and 55(3). On the issue of infringement by damaging connection with a well-known mark under
Section 55(3)(a), the Court of Appeal said that in order to establish this, one has to show that:
a.
The defendant’s mark or an essential part of it, is identical or similar to the proprietor’s mark;
b.
Use by the defendant of its mark would indicate a connection between the goods/services of
the defendant with the trademark proprietor; and
c.
Because of the connection, the interests of the proprietor are likely to be damaged.
It clarified that the tests for the requirements of “connection” and “[likelihood of damage to] the
proprietor’s interests” under Section 55(3)(a) are essentially the same as that for passing off under
common law. The only difference is that under passing off, it is the proprietor’s goodwill which is
looked into whereas under Section 55(3)(a), the concern is with the interests of the proprietor. The
Court of Appeal agreed in this case that the restriction on Ferrero’s expansion of use of the wellknown NUTELLA mark in the Singapore drinks business constituted a likely damage to its interests in
that well-known mark.
The Court further agreed that there was dilution by blurring under Section 55(3)(b)(i)). In order to
establish dilution by blurring, the Court said that one has to show that:
i.
The defendant has used the trade mark on its goods/services and that trade mark or the
essential part of it is identical/similar to the proprietor’s well-known mark;
ii.
Such use of the trade mark on the defendant’s goods/services has been without the consent
of the proprietor;
iii.
The well-known mark is well known to the public at large in Singapore; and
iv.
Such use would cause dilution in an unfair manner of the distinctive character of the wellknown mark.
As for the meaning of dilution “in an unfair manner”, the Court drew assistance from the
explanatory notes to Article 4(1)(b)(ii) of the Joint Recommendations Concerning Provisions on the
Protection of Well-Known Marks,: “…The meaning of the words “in an unfair manner: implies that
third-party use of a well known mark which is not contrary to honest commercial practice (e.g.
reference to a well known mark for review or parody) does not constitute dilution” (emphasis
added).
It commented that the provisions protecting against a claim of dilution by blurring aim to “[prevent a
well-known mark’s] distinctiveness from being blurred such that it need not necessarily give rise to
immediate association with the registered proprietor’s goods”. It also pointed out that there is no
need to show actual/present damage or harm to the proprietor’s mark. All that is needed is prima
facie evidence of a future risk of detriment which is not hypothetical. It would suffice to show a real
or serious possibility of damage to the well-known mark’s advertising quality or symbolic function.
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Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. and
another (High Court) (decision issued on 9 October 2012)
This case revolves around the ST REGIS trade mark belonging to Sheraton International Inc., a
subsidiary of Starwood Hotels & Resorts Worldwide Inc. (“Starwood”), and the
belonging to Staywell Hospitality Group Pty Ltd (“Staywell”), an Australian company.
mark
Staywell owns and operates 24 hotels mainly in Australia and New Zealand. Its Park Regis hotel was
first opened in Sydney in 1972. Staywell opened a hotel in Singapore in 2010 under the brand “Park
Regis Singapore” which it operates as a 4-star business hotel.
The ST REGIS brand of hotels was said to be found in 17 countries around the world. The first hotel
was opened in New York in 1902. The St Regis Singapore was officially opened in April 2008. The ST
REGIS brand is marketed as a luxury brand and Starwood asserted that it is highly regarded
worldwide as an exclusive and luxury name.
Starwood’s ST REGIS mark is registered in Classes 36, 37, 42 (now 43) and 41. It opposed an
application by Staywell for the mark
and 43.
(applied as a series of 2 marks) in Classes 35
The Principal Assistant Registrar (“PAR”) of the Trademark Office held, inter alia, that Starwood’s ST
REGIS mark was well known in Singapore as at the date of Staywell’s trademark application. As the
respective marks were similar, there was a likelihood of confusion. Potential customers would likely
be misled into thinking that Staywell’s services originated from Starwood or that there was some
connection between the parties. Starwood therefore succeeded on the ground of opposition under
Section 8(4)(a) read with (b)(i). However, the ST REGIS mark was held not to be well known to the
public at large. The PAR was not persuaded that the ST REGIS mark was known to the general public,
let alone most sectors of the public. The ground of opposition under Section 8(4)(a) read with (b)(ii)
therefore failed.
Staywell appealed on the PAR’s decision on Section 8(4) read with (b)(i).
Applying the holdings of the Court of Appeal in Novelty Pte Ltd v. Amanresorts Ltd and another
[2009] SGCA 13, it held that the question to be asked was whether the ST REGIS mark was well
known to the actual and/or potential client base of the St Regis Singapore. It found that the evidence
substantiated the PAR’s finding that the requisite level of knowledge was high enough to qualify the
ST REGIS mark as a well-known trade mark.
On the question of the similarity of the marks, the High Court held that the ST REGIS and
marks were similar.
On the issue of whether the similarity would indicate a connection between Staywell’s and
Starwood’s hotels, the Court held that this was essentially another way of asking whether there is a
likelihood of confusion. In this regard, the Court held, having considered all the factors (including
steps taken by Staywell to differentiate their services from those of Starwood and the fact that the
average Singapore consumer is “not an unthinking person in a hurry … but someone who would
exercise some care and good sense in making his purchases”), that there was no real likelihood of
confusion; and furthermore, that the fact that ST REGIS is a well-known mark does not affect its
analysis.
Since there was no likelihood of confusion, whether there was a likelihood of damage to the ST
REGIS brand from the use of the PARK REGIS mark was considered to be moot. In any case, the judge
felt that there was no real likelihood of damage and remained to be persuaded by the argument put
forward for Starwood, that being associated with the 3 to 4 star Park Regis hotel group would affect
its reputation for luxury.
Whereas the Court of Appeal in the NUTELLO case held that the restriction on Ferrero’s expansion of
use of the NUTELLA mark in the Singapore drinks business constituted a likely damage to its interests
in that well-known mark, the High Court in this case found that an equivalent argument (namely,
that allowing the registration of the
mark would prevent Starwood from expanding
into the 3 to 4 star hotel segment under the ST REGIS brand) not to apply in this case. The Court
found that there was no indication that Starwood had any intention of moving the ST REGIS brand
into a different market segment; it noted, on the contrary, that all of the hotels in the Starwood
Group under the ST REGIS brand were luxury hotels above the 3 to 4 star range. There was therefore
no basis for finding a likelihood of damage in this regard.
The High Court therefore held that the findings of the PAR on Section 8(4)(a) should be reversed.
(News: April 2013)