Ferrero defeated in dispute with Russian confectionery maker

Ukraine
On January 19 2011 the Higher Commercial Court of Ukraine upheld a decision of the Kiev Commercial Court of Appeal in which the latter had invalidated an international trademark registration owned by Soremartec SA (a company of the Ferrero Group) on the application of Landrin JSC, a Russian manufacturer of confectionery. This is the second trial of the case: at the beginning of 2010, the Supreme Court had considered a cassation claim by Soremartec and sent the case back for a new trial.
 
Ferrero owns an international trademark which protects the appearance of its well-known Raffaello sweets (International Registration 798984). Ferrero claimed that Landrin was using its trademark in the Waferatto product. Landrin counterclaimed, seeking the invalidation of Ferrero's trademark. In its counterclaim, Landrin argued that the trademark consisted of the realistic image of the product and, therefore, was not distinctive under the Ukrainian trademark laws. Ferrero, in turn, claimed that its mark had an original appearance, and provided evidence of use of the mark in Ukraine. It also submitted evidence that it had obtained trademark protection lawfully.
 
During the initial trial, two experts were appointed. The first expert established that Ferrero’s trademark was distinctive, and that its distinctiveness had been strengthened through use. According to the second expert, however, Ferrero’s trademark consisted of the realistic image of the product and, therefore, was not distinctive. The second expert also concluded that the mark had not acquired distinctiveness through use.
 
In the second trial, new parties were involved. A Ukrainian retailer of Landrin’s products was named as co-defendant, and another company filed its own claim against Ferrero’s trademark registration, arguing that it had concluded a contract with Landrin to supply confectionery in Ukraine. This company was also named as co-defendant.

The first instance court ruled in favour of Ferrero and dismissed the counterclaim. Ferrero's claim was partially satisfied. The first instance court also ruled that Landrin's counterclaim fell outside the three-year limitation period, as the date of registration of the international trademark was February 20 2003, and the counterclaim was brought in 2008.
 
However, the Kiev Commercial Court of Appeal reversed the decision of the first instance court and upheld Landrin's counterclaim. Ferrero's claim was thus dismissed. Despite the fact that the two expert conclusions were conflicting and that Ferrero had petitioned for another expert opinion, the appeal court refused to request another opinion and based its decision on the conclusions of the second expert.
 
The Higher Commercial Court confirmed the appeal court's decision, which can now be regarded as final.
 
Similar disputes in neighbouring Russia and in European countries have been decided in favour of Ferrero - in Russia, for example, Landrin is prohibited from manufacturing and selling the Waferatto product.

Julia Semeniy, Konnov & Sozanovsky, Kiev

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