Case Review: Ferrero S.p.A. v. Just Seed Ltd. (In Re NUELLA GOOD TIME CHIN CHIN) - A Triumph for Trade Mark Integrity

The decision of the Nigerian Trade Marks Tribunal delivered on December 6, 2024 in the matter of an opposition to Trade Mark Application No. NG/TM/O/2012/13675 for “NUELLA GOOD TIME CHIN CHIN” in Class 30 (Ferrero S.p.A. v. Just Seed Ltd.) offers a clear and welcome affirmation of the principles underpinning trademark oppositions, particularly deceptive similarity and the registrability of descriptive terms. The Tribunal's refusal to register the mark "NUTELLA GOOD TIME CHIN CHIN" in Class 30 (which is for goods encompassing bread pastries, and confectionery), demonstrates a robust commitment to protect established trademarks and prevent consumer confusion.

The decision of the Nigerian Trade Marks Tribunal delivered on December 6, 2024 in the matter of an opposition to Trade Mark Application No. NG/TM/O/2012/13675 for “NUELLA GOOD TIME CHIN CHIN” in Class 30 (Ferrero S.p.A. v. Just Seed Ltd.) offers a clear and welcome affirmation of the principles underpinning trademark oppositions, particularly deceptive similarity and the registrability of descriptive terms. The Tribunal's refusal to register the mark "NUTELLA GOOD TIME CHIN CHIN" in Class 30 (which is for goods encompassing bread pastries, and confectionery), demonstrates a robust commitment to protect established trademarks and prevent consumer confusion.

Just Seed Ltd., a local chin-chin manufacturer, countered by asserting their long-standing use and acquired goodwill in the contested mark, emphasizing the inclusion of "GOOD TIME CHIN CHIN" as a distinguishing element and arguing that Ferrero's primary products (chocolates and bread jams) differed from their chin-chin. They further contended that the slight difference in spelling between "NUTELLA" and "NUELLA" negated any likelihood of deception.

The Tribunal, in its judicious ruling, astutely focused on the core issue of the contested mark's validity for registration. The Tribunal’s reliance on the principles enunciated in Crysterlight Overseas Agency Ltd v Yugoles Drugs Co Ltd [1998] FHCL 390 and  the Court of Appeal's obiter dictum in Rikichi & Ors v Gambo  [2019] LPELR-47676(CA) at p 110 regarding the holistic impression of marks on consumers was particularly insightful. This approach correctly moves beyond a mere side-by-side or element-by-element comparison of the marks and delves into the likely perception of the average consumer.

The Tribunal's rejection of Just Seed's argument regarding the distinguishing effect of "GOOD TIME CHIN CHIN" was well-reasoned. The Tribunal rightly identified these words as being merely laudatory and descriptive of a popular snack within Class 30, rendering them unregistrable on their own. The inclusion of such non-distinctive terms alongside a deceptively similar element does little to alleviate the potential for confusion.

The most critical aspect of the decision lies in the Tribunal's finding of confusing similarity between "NUTELLA GOOD TIME CHIN CHIN" and "NUELLA." Despite the minor spelling variation, the dominant and immediately recognizable "NUTELLA" bears a striking phonetic and visual resemblance to Ferrero's established NUELLA mark. This similarity is amplified by the fact that both marks fall within the same class of goods, increasing the likelihood that consumers encountering "NUTELLA GOOD TIME CHIN CHIN" might mistakenly believe it to be associated with or originating from Ferrero.

Just Seed's argument regarding the difference in their specific product (chin-chin) compared to Ferrero's primary offerings was rightly dismissed as irrelevant in the context of trade mark similarity within the same class. Trade mark protection extends to the broader category of goods for which the mark is registered, not just the specific items currently being produced. Allowing registration in such circumstances would create a loophole, enabling potential infringers to capitalize on the goodwill and reputation of established brands by simply applying a slightly altered name to a related product within the same class.

In conclusion, the Trade Marks Tribunal's decision in Ferrero S.p.A. v. Just Seed Ltd. is a sound and principled application of trademark law. It underscores the importance of protecting established marks from deceptively similar applications, even when accompanied by descriptive terms. This ruling serves as a crucial reminder to businesses to conduct thorough trademark clearance searches before attempting to register marks and reinforces the Tribunal's commitment to safeguarding consumers from potential confusion in the marketplace. This case stands as a positive precedent for maintaining the integrity of the Trade Marks Register in Nigeria.