Court of Appeal rules in favour of Delfi in trademark case

The Court of Appeal has upheld the High Court's ruling in favour of mainboard-listed chocolate confectionery company Delfi Limited in a trademark infringement legal battle.

In an announcement on Tuesday, Delfi said Singapore's highest court had dismissed the appeal by Nestle SA to allow its trademark registration for the two and four finger shapes of its Kit Kat bars to remain on the trademarks register.

Nestle had previously filed a suit against Delfi and its subsidiary Delfi Singapore Pte Ltd, claiming that the shape and packaging of Delfi's two and four finger chocolate wafer "Take-it" had infringed the trademark rights and copyrights of its Kit Kat chocolate bar.

In April 2014, Delfi filed a counterclaim to invalidate Nestle's registered trademarks.

In a High Court decision in November that year, Delfi won its counterclaim.

The High Court had declared Nestle's registered trademarks as invalid, and ordered the registrations to be removed from the trademarks register.

This led to an appeal filed by Nestle against the High Court decision.

On Nov 24 this year, the Court of Appeal, said in its judgement that it affirmed the High Court decision and findings that the rectangular shape and grooves of the chocolate bar were features necessary to create a functional shape for cost-effective and efficient commercial mass production and packaging.

The judgement noted that they were essential characteristics inherent to the generic functions of a chocolate bar that consumers look for, including ease of breaking it, apart for consumption.

The High Court decision invalidating Nestle's registered trademarks was upheld, with costs awarded in favour of Delfi.

The parties have been granted leave to furnish, within two weeks of the judgment, written arguments on Delfi's counterclaim for groundless threats of trademark infringement, Delfi said.

John Chuang, Delfi's chief executive, said: "This has been a long and drawn out process but we feel vindicated and extremely pleased that the Court of Appeal has ruled in our favour and upheld the decision of the High Court. With this confirmation, we continue to provide all our consumers with great tasting chocolate products."

Delfi shares closed trading up S$0.20 at S$2.37 on Tuesday.

This article was first published on November 30, 2016.
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