What was Nalli Pte Ltd v Nalli Kuppuswami Chetti [2024] SGHC(A) 18 about?

Decided on 27 May 2024 by the Appellate Division of the High Court, the case concerned a dispute between two sides of Mr Nalli Chinnasami Chetty's family arising from deeds of settlement entered in the late 1990s, raising trade mark infringement, passing off, and contractual interpretation issues.

Which judges decided Nalli Pte Ltd v Nalli Kuppuswami Chetti [2024] SGHC(A) 18?

The Appellate Division coram comprised Belinda Ang Saw Ean JCA, Kannan Ramesh JAD and Aedit Abdullah J. Aedit Abdullah J delivered the judgment of the court in Civil Appeal No 53 of 2022, which arose from Suit No 286 of 2020.

[2024] SGHC(A) 18, NALLI PTE LTD & 2 Ors v NALLI KUPPUSWAMI CHETTI and NALLI RAMANATHAN & Anor - Judgment, Outcome & Holding

Court	High Court (Appellate Division)
Decided	27 May 2024
Judges	Aedit Abdullah, Belinda Ang Saw Ean, Kannan Ramesh
Charges / claim	Intellectual Property, Contract
Outcome	Appeal allowed
Counsel	Grays LLC, RLC Law Corporation, G Radakrishnan, Kanthosamy Rajendran

SUPREME COURT OF SINGAPORE

[27 May 2024]

Case summary

Nalli Pte Ltd and others v Nalli Kuppuswami Chetti and Nalli Ramanathan (trading as Nalli Chinnasami Chetty) and another [2024] SGHC(A) 18

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Decision of the Appellate Division of the High Court (delivered by Aedit Abdullah J):

Outcome: The Appellate Division of the High Court (“AD”) allowed an appeal against a decision of the General Division of the High Court (“GDHC”) in-part. The AD reversed the GDHC’s findings that the first appellant was liable for breach of deeds of settlement and the appellants were jointly liable for trade mark infringement, passing off and malicious falsehood and dismissed the appellants’ appeal against GDHC’s decision disallowing the appellants’ counterclaims.

Pertinent and significant points of the judgment

• The registered marks,

, and the allegedly infringing sign,

, were not similar. Although they both comprised the word “Nalli”, visually, the different manner in which the word “Nalli” was rendered in each case gave rise to material distinctiveness. Conceptually, the deliberate choice of identifying a lighted candle motif to represent the letter “I”, in relation to a customer base comprising purchasers of sarees, was a point of significant conceptual distinction. It would seem quite evident that this choice was to associate

with the candle, fire and light, all of which carry significance in Indian culture and the Indian community, the target demographic for NPL’s products. These ideas were absent in

: at [110] to [113].

• No likelihood of confusion arose in relation to the origin of the goods and services provided by both sides as the two parties and their products had coexisted in the market since at least the time that the Deeds of Settlement were executed. The inference is that over the 20-odd years since, the average consumer’s perception of the distinction between the two sources or origin signified by the goods bearing the different marks, would only have been reinforced: at [121].

Background

1 This dispute involved two sides of the family of one Mr Nalli Chinnasami Chetty (“Mr Nalli”). The third appellant is Mr Nalli’s granddaughter. She, along with the second appellant, are the directors and shareholders of the first appellant (“NPL”), a Singapore-incorporated company. The first respondent (“NCC”) is an Indian partnership with two partners, who are Mr Nalli’s grandson and great-grandson respectively. The two partners are also the directors and shareholders of the second respondent (“NCCPL”), a Singapore-incorporated company.

2 NPL was incorporated in Singapore in 1990 and its shop had used the name “Nalli Pte Ltd” since 1991. In 1992, NCC started business in Singapore when it incorporated NCCPL and opened a shop.

3 In 1992, a dispute arose between NPL and NCC/NCCPL in relation to trade mark applications brought by both sides. NPL then commenced a suit against NCCPL in the High Court (“Suit 1580”). NPL obtained an injunction against NCCPL restraining the latter from operating a business under the name “Nalli” or “Nalli Chinnasami”.

4 By 1997, the trial of Suit 1580 had not taken place. NCCPL and NPL then reached a settlement in respect of Suit 1580. This settlement took the form of two deeds of settlement, both dated 28 February 1997: one was between NCC and NPL (“DS1”) and the other between NCCPL and NPL (“DS2”) (collectively, the “Deeds of Settlement”). DS1 pertained to the registration and use of the parties’ respective trade marks. DS2 pertained to the use of “Nalli” by the parties as a trade name and a trade mark. Following the Deeds of Settlement, the parties proceeded to register their trade marks. NPL registered a composite mark bearing a woman’s face (the “WFM”):

. NCC registered a mark in the form of

5 In 2020, NPL opened a shop at 2C Buffalo Road. Its conduct in relation to the operation of this shop, namely the various uses of

, led the respondents to commence the suit below against NPL on 30 March 2020 for breach of the Deeds of Settlement, malicious or injurious falsehood, passing off and trade mark infringement. The appellants then counterclaimed for, inter alia, breach of DS2 and malicious falsehood by NCCPL.

6 The judge below allowed the respondents’ claims and dismissed the appellants’ counterclaims. The appellants appealed.

Decision

NPL did not breach the Deeds of Settlement

7 On a proper interpretation of DS2, NCCPL and NPL could use “Nalli” in their trade and business names. There were additional restrictions placed on use of “Nalli” as a trade name by NCCPL but none on NPL. The complained-of uses of

by NPL as a trade name therefore did not breach DS2: at [67], [70], [76], [84] and [87].

8 The Deeds of Settlement stipulated that NPL could only use the WFM on its products and packaging (including carrier bags) in Singapore. The complained-of uses of

by NPL as a trade mark did not breach the Deeds of Settlement as they were neither used on its products and packaging nor used as a trade mark: at [72], [74], [77], [85], [88] and [90].

NCCPL did not breach the Deeds of Settlement

9 The alleged statements by NCCPL or its employees, which suggested that NCCPL was the only “Nalli” in Singapore, merely indicated that NCCPL was the only branch in Singapore of Nalli from Chennai associated with NCC. The other complained-of collaterals made no reference to NCCPL or its shop in Singapore: at [95] to [96].

NPL was not liable for trade mark infringement

10 Trade mark infringement under s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) was not made out as the marks were not identical: at [103].

11 Trade mark infringement under s 27(2) of the TMA was not made out as the signs were not similar. Even if such similarity existed, no likelihood of confusion arose as to the origin of the goods and services provided by each side: at [108] to [113], [121] to [125].

NPL was not liable for passing off

12 The manner in which NPL ran its business did not give rise to actionable misrepresentations which could found a claim in passing off: [136] to [141].

NPL was not liable for malicious falsehood

13 NPL’s display of the phrase “Original Nalli Products” on its price cards and display case did not amount to an attack on or disparagement of the other side, and there was no false assertion or malice. The use of the phrase was only aimed at emphasising the parties’ respective right to use “Nalli”: at [144].

14 Given the court’s finding that there was no malicious falsehood by NPL, no personal liability could be attached to the second and third appellants: at [149].

The respondents were not liable for malicious falsehood

15 The statements which were made by NCCPL’s employees to a customer (who had in fact been sent undercover by NPL) did not amount to malicious falsehood. Whilst the employees did say that NCCPL was “original” and there was “just this one shop”, NPL was not NCCPL”s shop and was a “duplicate” “Nalli” and NCCPL was the only “Nalli”, the context of the conversations showed that the employees were intimating that NCCPL was simply the only branch in Singapore of Nalli from Chennai: at [146] to [148].

This summary is provided to assist in the understanding of the Court’s grounds of decision. It is not intended to be a substitute for the reasons of the Court. All numbers in bold font and square brackets refer to the corresponding paragraph numbers in the Court’s grounds of decision.

NALLI PTE LTD & 2 Ors v NALLI KUPPUSWAMI CHETTI and NALLI RAMANATHAN & Anor

Outcome

Key facts

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Case Significance

Summary

What was Nalli Pte Ltd v Nalli Kuppuswami Chetti [2024] SGHC(A) 18 about?

Which judges decided Nalli Pte Ltd v Nalli Kuppuswami Chetti [2024] SGHC(A) 18?

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Referenced in

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Judgment