Defeat for Ferrero in Raffaello dispute

Ukraine
In the dispute between Soremartec SA, a company of the Ferrero Group, and Russian confectionery producer Landrin, on October 27 2009 the Higher Commercial Court of Ukraine upheld the decision of the Kiev Commercial Court of Appeal in which the latter had not only found that Ferrero’s trademark rights in the appearance of its Raffaello sweet had not been infringed, but had also ordered that Ferrero’s trademark registration (International Registration 798984) be cancelled.
 
In 2008 Ferrero started proceedings against Landrin, requesting that the latter stop using its trademark. Ferrero argued that:

  • the appearance of Landrin's sweets was very similar to Ferrero’s trademark; and
  • the mark was placed on the packaging of Landrin's product.
Landrin counterclaimed for the cancellation of Ferrero’s international registration in Ukraine on the grounds that the mark lacked distinctive character.

The first instance court held that there had been no trademark infringement and confirmed the validity of Ferrero’s trademark. However, the decision was reversed by the appeal court.
 
In particular, the appeal court found that the mark, which is registered for goods in Class 30 of the Nice Classification (pastry, confectionery, chocolates and ice creams) was not inherently distinctive and had not acquired distinctive character as of the date of registration in Ukraine (February 2002). According to the court, the appearance of the Raffaello sweets (ie, a round, irregular shape, and the combination of the colours white, cream, pink and beige) was not original since it was often used by confectionery manufacturers and was usual for this type of products. The court pointed out that similar products of other manufacturers were present on the Ukrainian market (however, it did not refer to any product that contained all the aforementioned features).
 
During the course of the proceedings, two experts testified to establish whether Ferrero’s mark was inherently distinctive or had acquired distinctive character. The first expert stated that Ferrero’s trademark consisted of the original, unusual and aesthetically attractive appearance of its Raffaello sweet, and was not conditioned by characteristics of the product itself. The trademark thus enabled consumers to distinguish Ferrero’s sweets from those of others. The expert also concluded that the inherent distinctiveness of the mark had been strengthened through use. However, according to the second expert, Ferrero’s trademark consisted only of the image of a product and, therefore, was not inherently distinctive. The expert also stated that the mark had not acquired distinctiveness through use.
 
The appeal court rendered its decision based on the conclusions of the second expert, and the Higher Commercial Court affirmed. Ferrero filed a cassation appeal before the Supreme Court of Ukraine. The appeal was accepted for consideration and the hearing is due to take place on January 26 2010.

Olga Asadcha, Konnov & Sozanovsky, Kiev

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