By Joanna Ip

When designing a survey to collate evidence establishing that the mark is "well-known to the public", beware of pitfalls in the framing of the questions -- Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 17 (Singapore, High Court, 26 July 2011)

In a judgment concerning Ferrero (the owners of the mark "NUTELLA") and their claim against a coffee store chain. The Connoisseur Concerto ("TCC") for the sale of a drink named "NUTELLO", the High Court covered a rich spread of trade mark issues likely to give food for thought to practitioners and trade mark owners alike - including pitfalls to avoid in using survey evidence and what evidence is needed to show that a mark is considered "well known to the public at large".

Facts

Ferrero's mark NUTELLA, used in connection with a cocoa-based hazelnut bread spread, was registered for various products including "chocolate products" but not beverages. The NUTELLO product (a name which TCC admitted was coined from a mix of the words "NUTELLA" and "expresso") was a drink - gourmet hot coffee beverage prepared with "lashings" of the NUTELLA spread. Since the registration was not for an identical mark or for identical goods covered by the registration, Ferrero had to show a likelihood of confusion in order to make its case of trademark infringement under the Trade Marks Act. To do this, it adduced survey evidence where members of the public were asked a series of questions designed to test whether there was a likelihood of confusion arising from the use of the NUTELLO name. TCC also countered with evidence from a survey it had conducted.

Decision

The Court noted that it had to make its own final determination on the likelihood of confusion and that "great care and circumspection" was needed in reviewing survey evidence. Applying the guidelines given in Imperial Group Ltd v Philip Morris & Co (1984), the Court identified flaws in the surveys such as;

  • The sequence and syntax of the questions led / influenced respondents into giving a desired answer;
  • Multiple choice answers given to a respondent sometimes forced a choice and deprived a respondent from giving the room to register their spontaneous reactions; and
  • Some of the vocabulary used could prime respondents to reply in favour of a particular outcome.

The Court did ultimately use some of the findings in the surveys but discounted some of the weight attached to them partly due to the flaws above.

The Court also found that the NUTELLA mark was well known to the public "at large" in Singapore. This finding gave Ferrero a wider scope of protection under the Trade Marks Act in that it allowed Ferrero to overcome questions of dissimilarities between the NUTELLO and NUTELLA products (i.e., a drink vs a bread spread). Ferrero's supporting evidence of fame included the fact that NUTELLA was carried in 94% to 98% of stores in Singapore that sold food items, that 2 million units of NUTELLA were sold every year (as against 1.1 million householders nationwide), survey evidence, twenty independent print media articles dating back to 1989 showing its fame, and Internet blog postings.

Comments

Clearly, not all trademarks will achieve the rarefied status of a mark that is well-known to the public at large and the ability of Ferrero to call upon evidence needed to meet this standard speaks to the value to trade mark proprietors of maintaining comprehensive records charting the growth and fame of a key trademark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.