Archives for November 2012
Slightly more than a year from the Opposition proceeding in the Intellectual Property Office of Singapore, it seems that the trademark ownership battle between American hotel giants Starwood Hotels & Resorts Worldwide (“Starwood”), owner of the “ST. REGIS” trademark, and their Australian adversary Staywell Hospitality Group Pty Ltd (“Staywell”), proprietor of the “” mark, continued to rage when Staywell appealed against the decision of the Principal Assistant Registrar of Trade Marks (the “Registrar”) in the Opposition proceeding, and Starwood in turn lodged a cross-appeal.
The facts and decision of the Registrar in the Opposition proceeding can be found at here.
In the recent Singapore Court of Appeal (CA) case of Sarika Connoisseur Café Pte Ltd v Ferrero SpA, the CA was asked to resolve several issues on the matters of well-known trademark infringement, dilution and passing off.
Sarika Connoisseur Café (the Appellant), is the owner of the “TCC – the connoisseur concerto” café chain in Singapore. The Appellant started selling an espresso-based drink, “Nutello”, in August 2007, which incidentally contained Ferrero SpA (the Respondent)’s popular chocolate-based hazelnut spread, sold under the trademark “Nutella”, as one of its ingredients. The High Court had previously found against the Appellant, and held that the Appellant’s “Nutello” had infringed the Respondent’s well-known “Nutella” mark. The Court further held that the Appellant’s mark amounted to dilution and passing off of the Respondent’s mark.