Ferrero fights off confusing device mark registration

A court of appeal in Iran has overturned an earlier decision and has allowed Ferrero SpA's opposition to the registration of the device mark KUKU CHICHAK.

Iran Chocolate Co filed an application to register the device mark, which consisted of the words KUKU CHICHAK next to a chocolate bar in orange and white wrapping and a glass of milk, for goods in Classes 30, 35 and 39 of the Nice Classification. Ferrero opposed on the grounds that the mark was confusingly similar to its KINDER device mark.

At first instance, the court ruled against Ferrero, arguing that the difference between the word elements used in the marks eliminated in likelihood of confusion. In addition, it noted that the similarity between the wrapper designs of each party's chocolate bar was negligible.

On appeal, the court reversed the earlier judgment, holding that the wording in the marks did not eliminate the likelihood of confusion. As the layout and pictorial elements of the two marks were analogous, the marks were confusingly similar.

The court decision was published in the Iranian Official Gazette on October 10 2006.

Mohammad Badamchi, HAMI Legal Services, Tehran, with the assistance of Raysan Patent & Trademark Agents, Tehran