Nalli Pte Ltd v Nalli Kuppuswami Chetti: Trademark, Passing Off & Contract Dispute
Nalli Pte Ltd and Dasarathan Madhavan and Alluri Mahalakshmi Madhavan appealed a decision of the High Court to the Appellate Division of the High Court of Singapore. The case concerned a dispute with Nalli Kuppuswami Chetti and Nalli Ramanathan (trading as Nalli Chinnasami Chetty) and Nalli Chinnasami Chetty Pte Ltd regarding the use of the 'Nalli' name in their businesses, involving claims of breach of contract, malicious falsehood, passing off, and trademark infringement. The Appellate Division allowed the appeal, finding no breach of the Deeds of Settlement, trademark infringement, passing off, or malicious falsehood. The court set aside the injunctions and orders made below and ordered costs to the appellants.
1. Case Overview
1.1 Court
Appellate Division of the High Court1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding trademark/passing off dispute over 'Nalli' name. Court allowed appeal, finding no breach of settlement deeds or trademark infringement.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Nalli Pte Ltd | Appellant, Defendant | Corporation | Appeal Allowed | Won | |
| Dasarathan Madhavan | Appellant, Defendant | Individual | Appeal Allowed | Won | |
| Alluri Mahalakshmi Madhavan | Appellant, Defendant | Individual | Appeal Allowed | Won | |
| Nalli Kuppuswami Chetti | Respondent, Plaintiff | Individual | Claims Dismissed | Lost | |
| Nalli Ramanathan | Respondent, Plaintiff | Individual | Claims Dismissed | Lost | |
| Nalli Chinnasami Chetty | Respondent, Plaintiff | Partnership | Claims Dismissed | Lost | |
| Nalli Chinnasami Chetty Pte Ltd | Respondent, Plaintiff | Corporation | Claims Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Belinda Ang Saw Ean | Justice of the Court of Appeal | No |
| Kannan Ramesh | Judge of the Appellate Division | No |
| Aedit Abdullah | Judge of the High Court | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Kanthosamy Rajendran | RLC Law Corporation |
| G Radakrishnan | Grays LLC |
4. Facts
- NPL and NCCPL are businesses selling silk sarees and other clothing items.
- The dispute arises from the competing use of the name 'Nalli' by NPL and NCCPL.
- Deeds of Settlement were entered into in 1997 to allow both entities to use the name 'Nalli'.
- NCC registered the mark and NPL registered the WFM.
- The respondents alleged that NPL breached the Deeds of Settlement by giving prominence to the word 'Nalli'.
- The respondents also claimed that NPL made false statements about the respondents' products.
- The appellants argued that the Deeds of Settlement never prohibited NPL from using the word 'Nalli' simpliciter.
5. Formal Citations
- Nalli Pte Ltd and others v Nalli Kuppuswami Chetti and Nalli Ramanathan (trading as Nalli Chinnasami Chetty) and another, Civil Appeal No 53 of 2022, [2024] SGHC(A) 18
6. Timeline
| Date | Event |
|---|---|
| Business of selling silk sarees founded in Chennai by Mr Nalli Chinnasami Chetty | |
| Nalli Pte Ltd incorporated | |
| Mr NDC and Mrs Madhavan discovered that Mr NKC and Mr NR planned to incorporate NCCPL in Singapore | |
| Nalli Pte Ltd applied to register the mark “NALLI” | |
| Nalli Chinnasami Chetty Pte Ltd incorporated | |
| NCC applied to register a stylised “Nalli” mark | |
| Nalli Pte Ltd commenced Suit No 1580 of 1992 against NCCPL | |
| Deeds of Settlement entered into between NCC and NPL, and between NCCPL and NPL | |
| NCC and NPL registered the mark and the WFM respectively | |
| Respondents commenced suit against NPL for breach of Deeds of Settlement, malicious falsehood, passing off and trade mark infringement | |
| Trial judge issued written judgment | |
| Trial judge delivered oral judgment | |
| Hearing date | |
| Hearing date | |
| Judgment reserved |
7. Legal Issues
- Breach of Contract
- Outcome: The court found that NPL did not breach the Deeds of Settlement.
- Category: Substantive
- Sub-Issues:
- Interpretation of deeds of settlement
- Trade Mark Infringement
- Outcome: The court found that NPL was not liable for trade mark infringement.
- Category: Substantive
- Sub-Issues:
- Use of identical or similar sign
- Likelihood of confusion
- Passing Off
- Outcome: The court found that NPL was not liable for passing off.
- Category: Substantive
- Sub-Issues:
- Misrepresentation
- Goodwill
- Damage
- Malicious Falsehood
- Outcome: The court found that NPL was not liable for malicious falsehood.
- Category: Substantive
- Sub-Issues:
- False statement
- Malice
- Damage
8. Remedies Sought
- Injunctions
- Destruction of materials
- Inquiry as to damages
- Account of profits
9. Cause of Actions
- Breach of Contract
- Trade Mark Infringement
- Passing Off
- Malicious Falsehood
10. Practice Areas
- Commercial Litigation
- Intellectual Property Litigation
- Contract Disputes
11. Industries
- Retail
- Fashion
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd | High Court | Yes | [2016] 3 SLR 517 | Singapore | Cited for factors in determining honest practices in own name defence under Trade Marks Act. |
| PT Sandipala Arthaputra and others v STMicroelectronics Asia Pacific Pte Ltd and others | High Court | Yes | [2018] 1 SLR 818 | Singapore | Cited regarding directors' personal liability for company's tortious acts. |
| Lim Sze Eng v Lin Choo Mee | Court of Appeal | Yes | [2019] 1 SLR 414 | Singapore | Cited for principles of contractual interpretation. |
| PT Bayan Resources TBK v BCBC Singapore Pte Ltd | Court of Appeal | Yes | [2019] 1 SLR 30 | Singapore | Cited for principles of contractual interpretation. |
| Y.E.S. F&B Group Pte Ltd v Soup Restaurant Singapore Pte Ltd | High Court | Yes | [2015] 5 SLR 1187 | Singapore | Cited for principles of contractual interpretation. |
| CIFG Special Assets Capital I Ltd v Ong Puay Koon | High Court | Yes | [2018] 1 SLR 170 | Singapore | Cited for principles of contractual interpretation. |
| Sembcorp Marine Ltd v PPL Holdings Pte Ltd | High Court | Yes | [2013] 4 SLR 193 | Singapore | Cited for principles of contractual interpretation. |
| Yap Son On v Ding Pei Zhen | High Court | Yes | [2017] 1 SLR 219 | Singapore | Cited for principles of contractual interpretation. |
| Zurich Insurance (Singapore) Pte Ltd v B-Gold Interior Design & Construction Pte Ltd | High Court | Yes | [2008] 3 SLR(R) 1029 | Singapore | Cited for principles of contractual interpretation. |
| Lucky Realty Co Pte Ltd v HSBC Trustee (Singapore) Ltd | High Court | Yes | [2016] 1 SLR 1069 | Singapore | Cited for principles of contractual interpretation. |
| Dr Who Waterworks Pte Ltd and others v Dr Who (M) Sdn Bhd and others | High Court | Yes | [2023] SGHC 156 | Singapore | Cited for elements of trade mark infringement. |
| Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA | Court of Appeal | Yes | [2013] 1 SLR 531 | Singapore | Cited for competing sign comparison in trade mark infringement. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal | Court of Appeal | Yes | [2013] 2 SLR 941 | Singapore | Cited for assessing likelihood of confusion in trade mark infringement. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal | Court of Appeal | Yes | [2014] 1 SLR 911 | Singapore | Cited for factors in assessing confusion inquiry in trade mark infringement. |
| The Singapore Professional Golfers’ Association v Chen Eng Waye and others | Court of Appeal | Yes | [2013] 2 SLR 495 | Singapore | Cited for elements of the tort of passing off. |
| Novelty Pte Ltd v Amanresorts Ltd and another | High Court | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited for misrepresentation in passing off. |
| Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd | High Court | Yes | [2015] 2 SLR 825 | Singapore | Cited for extraneous factors in passing off. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2010] 1 SLR 382 | Singapore | Cited for trade mark use in trade mark infringement. |
| Nalli Kuppuswami Chetti and Nalli Ramanathan (trading as Nalli Chinnasami Chetty) and another v Nalli Pte Ltd and others | High Court | Yes | [2022] SGHC 109 | Singapore | The judgment being appealed. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Nalli
- Nalli Pte Ltd
- Nalli Chinnasami Chetty
- Deeds of Settlement
- Trade mark
- Passing off
- Malicious falsehood
- WFM
- Signage
- Carrier bags
- Price cards
- Display case
15.2 Keywords
- Nalli
- Trade mark
- Passing off
- Breach of contract
- Singapore
- Intellectual property
- Settlement
- Infringement
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Intellectual Property Law | 80 |
| Breach of Contract | 75 |
| Passing Off | 70 |
| Deeds of Settlement | 65 |
| Commercial Disputes | 60 |
| Malicious Falsehood | 55 |
| Torts | 50 |
| Civil Procedure | 40 |
| Judgments and Orders | 30 |
16. Subjects
- Intellectual Property Law
- Contract Law
- Trade Mark Law
- Commercial Law