In more detail
Factual background
The appellants are a Singapore-incorporated company called Nalli Pte Ltd ("NPL"), whose directors and shareholders are Mr. Nalli's granddaughter through his second wife, and her husband. The respondents are an Indian partnership called "Nalli Chinnasami Chetty" ("NCC"), a Singapore-incorporated company called Nalli Chinnasami Chetty Pte Ltd ("NCCPL") and their partners and director-shareholders, Mr. Nalli's grandson through his first wife, and the grandson's son.
When NPL applied to register the mark "NALLI" in June 1992, NCC objected. NCC then applied to register a stylised "Nalli" mark, 
, in July 1992, to which the Registrar of Trade marks & Patents objected in light of the first-mentioned application. NPL then commenced a suit against NCCPL in August 1992. A settlement by way of two deeds of settlement was entered into in 1997. The deeds of settlement broadly allowed NCCPL and NCC, and NPL, to co-exist in Singapore by allowing both entities to use the name “Nalli” in their respective businesses, and for NCC and NPL to register their respective trade marks. In particular, while both NPL and NCCPL could use the term "Nalli" as their trade mark and trade/business name:
- NCCPL could only advertise itself as "Nalli Chinnasami Chetty” and not merely as "Nalli" in Singapore or as the sole and only "Nalli" in Singapore.
- NCC would register and use the mark "Nalli" in its stylised form above.
- NPL would register and use the mark "Nalli" on its products and packaging (including carrier bags) only in the form of the composite mark bearing a woman's face,
("WFM").
Following NPL's opening of a new shop, the respondents brought a suit against NPL and the other appellants for, among others, breach of the deeds of settlement, passing off and trademark infringement, as, among others, the signage and display case of the new shop gave the word "Nalli" prominence and NPL's carrier bags and boxes bore the words "Nalli" and "Nalli Singapore" in forms other than the WFM and without the words "Pte Ltd". In this connection, the respondents also sought injunctive relief.
Conversely, the appellants denied all such claims and brought several counterclaims. In particular, they claimed the following:
- There was no breach of the deeds of settlement as the deeds of settlement did not prevent NPL from using the word "Nalli" simpliciter.
- There was no misrepresentation giving rise to the passing off claim as they had come to be known to their customers as "Nalli" and had been using that word as an identifier for a number of years.
- There was no trade mark infringement, as NPL had only used the word "Nalli" in the form
, which was sufficiently distinguishable from NCC's 
.
At trial, the General Division of the High Court found in favour of the respondents. The appellants appealed.
The Appellate Division's decision and reasoning
On the issue of breach of the deeds of settlement, the Appellate Division, applying the ordinary principles of contractual interpretation, overturned the General Division's finding of breach. Among others, the Appellate Division disagreed with the General Division's interpretation of the deeds of settlement. It found that there was no restriction on NPL against describing itself merely as "Nalli" — the provision that allowed both NPL and NCCPL to use the term "Nalli" as their trade mark and trade/business name was simply limited by the other provision that restricted NCCPL's use of the term "Nalli", without affecting NPL's own use of the term "Nalli".
On the issue of whether there was an infringement of NCC's 
mark by NPL's use of the sign 
, as argued by the respondents, the Appellate Division disagreed with the General Division, as both marks were neither identical nor similar. In respect of its analysis of their similarity, although the Appellate Division held that NCC's mark was inherently distinctive such that the threshold to find dissimilarity was a high one, there was:
- Low visual similarity due to the candle motif and stylisation of
- Low conceptual similarity given the use of the candle motif, which associates
with a subject-matter carrying significance in Indian culture and the Indian community
Finally, on the passing off claim, the Appellate Division disagreed with the General Division's finding that there was misrepresentation due to the use of the word "branch" on the sign outside one of NPL's shop, the write-up on NPL's website, and NPL's use of the song from a Tamil film. In this connection, the Appellate Division reiterated that misrepresentation is actionable only if it gives rise to actual or a likelihood of confusion, and it took the view that the relevant facts did not give rise to any likelihood of confusion.
Key takeaways
This decision provides guidance and clarifies the orthodoxy in the law on trade mark infringement and passing off, as well as on contractual interpretation. It is welcome that the Appellate Division of the High Court took a commonsensical approach in interpreting the relevant deeds of settlement, analysing the similarity (or lack thereof) between the marks and the application of the misrepresentation element of a passing off action.
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