SINGAPORE: TRADE MARK INFRINGEMENT OF KIT KAT

January 29th, 2015

 

This is an article about an interesting case of Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another.

Societe Des Produits Nestlé SA (hereinafter referred as “the 1st Plaintiff”) is a public company incorporated in Switzerland and Nestle Singapore (Pte) Ltd (hereinafter referred as “the 2nd Plaintiff”) is a company incorporated in Singapore. Both the 1st and 2nd Plaintiffs are the proprietors of the KIT KAT trade mark for wafer products.

The 1st and 2nd Plaintiffs sued Petra Foods Limited (hereinafter referred as “the 1st Defendant”) which is a public company incorporated in Singapore and Delfi Singapore Pte Ltd, (hereinafter referred as “the 2nd Defendant”) which is a company incorporated in Switzerland for trade mark infringement.

The 1st Plaintiff is the registered owner of Singapore registered trade marks no. T0000002A and T0000003Z for “two fingers shape” and “four fingers shape” trade marks claiming chocolate products (hereinafter referred to as “the allegedly infringed registered trade marks”). The 1st Plaintiff argued that they are the owner of unregistered trade mark “two fingers composite mark” and the “artistic work” for chocolate products.

The Plaintiffs filed this suit as the Defendants allegedly did not cease the use the 2-Fingers Take-It and 4-Fingers Take-It (hereinafter referred to as “the allegedly infringing trade marks”) despite having demanded them.

The Defendants had argued that the allegedly infringed registered trade marks should not be registered in the first place as they are descriptive and non-distinctive. The Defendants also argued that the 2nd Plaintiff does not have locus standi and there is no reason for them to be a party in this suit. The Defendants also raised the fact that only the 1st Plaintiff has the ownership and rights.

In terms of the two fingers composite mark, the Defendants had submitted that 1st Plaintiff’s red packaging does not function the same way as the origin of the trade mark. Hence it is not possible for the 1st Plaintiff to claim that the trade mark is a well-known mark in Singapore. The Defendants had also submitted that the allegedly infringed registered trade marks did not function as trade marks at the first place.

The High Court had accepted the Defendants’ arguments and held that that the allegedly infringed registered trade marks were not registerable and had ordered for the trade marks to be removed from the Register.