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 ...view middle of the document...
Trademark infringement case (Overseas)
Gucci VS Guess
In 2009, Gucci first filed a suit against Guess, accusing that Guess designs and marks infringed on five of Gucci’s trademarks. Gucci wanted an injunction and was attempting to claim $120 million in damages. The judge granted Gucci injunctive relief and a small fragment of the damages sought 3 years later, in 2012. Gucci is an Italian fashion company, and is one of the largest companies and most recognizable luxury and goods brands in the world today. Guess is an American fashion company, and is aimed towards the middle class.
The first case was taken place in USA, New York and the second case took place in Italy, Milan. However, the Milan court’s decision was in favour of Guess and Gucci lost the law suit in 2013.
The five Gucci trademarks are, first, a Green-Red-Green stripe used on handbags, luggage, and different leather goods; second, a repeating double ”G” pattern consisting of a pair of inward facing, inverted “G”s; third, that pattern’s use in conjunction with a diamond; fourth, a stylized “G”; and fifth, a script mark bearing the brand’s name. The corresponding Guess marks were, first, multiple three colored stripes, including the Green-Red-Green stripe, used on some of its shoes; second, a trademarked a “Quattro G” logo and pattern consisting of four interconnected “G”s; third, the use of this pattern rotated 45 degrees clockwise and surrounded by a stitched diamond-shaped border; fourth, a square stylized “G”; and fifth, a script mark bearing the brand’s name.
The judge granted Gucci injunctive relief banning Guess from using the Quattro G Pattern in brown/beige, a Green-Red-Green Stripe (but not stripes with other colors), and certain Square G marks. Guess was allowed to continue using the other designs. In terms of damage relief, the judge held Gucci was only entitled to an accounting of profits and limited the damages to those financial gains gained in sales of goods with the Quattro G pattern in brown/beige color design and the Green-Red-Green stripe. Thus, out of the $120 million claim, the judge only granted Gucci a payout of $4.648 million, which was then reduced to $456,183.