Ferrero Rocher chocolates constitute well-known unregistered 3D mark
In Ferrero SpA v NA Castro Import and Export Ltd (CC 1976-08-07, November 30 2009), the District Court of the Central District in Petach Tikva has held that the mark FERRERO ROCHER is a well-known mark in Israel, and that Ferrero SpA's Ferrero Rocher chocolate balls constitute a well-known unregistered three-dimensional mark.
Ferrero is the manufacturer of the famous Ferrero Rocher chocolate balls, which have been sold in Israel for more than three decades. Ferrero is also the owner of Israeli trademark registrations for the word mark FERRERO ROCHER (registered on January 5 1988), the mark FERRERO ROCHER (and design) (registered on June 15 2000) and the mark FERRERO ROCHER (and design) (also registered on June 15 2000). NA Castro Import and Export Ltd imports chocolate balls under the name Jinnuo Chocher, which are produced by Jinnuo, a manufacturer from Guangdong, China.
On February 12 2003 Israel Customs informed Ferrero that a shipment of chocolate balls suspected of infringing its registered trademarks had arrived. According to customs guidelines, if there is a suspicion that infringing goods are making their way into the country, the registered trademark owner has several days to file a civil claim for trademark infringement against the importer. If it decides not to do so, the shipment will be released. On March 11 2003, after several failed rounds of negotiations, Ferrero filed a claim for trademark infringement.
Ferrero argued as follows:
- The trademark JINNUO CHOCHER is confusingly similar to the word mark FERRERO ROCHER;
- The device mark JINNUO CHOCHER is confusingly similar to both of Ferrero's device marks;
- The shape and packaging of the Jinnuo Chocher chocolates infringed Ferrero's well-known unregistered three-dimensional mark;
- Castro's use of Ferrero's registered and unregistered marks constituted passing off; and
- Castro's actions amounted to 'deception' under the Consumer Protection Law.
In deciding whether the mark JINNUO CHOCHER was confusingly similar to Ferrero's registered trademarks, the court applied the well-established three-part test (ie, visual and phonetic similarity between the marks, similarity between the goods and their potential consumers, and the totality of the circumstances). The court ruled that the shape of the Jinnuo Chocher product was confusingly similar to the shape of Ferrero's product. The court also noted that since Castro's and Ferrero's products were intended for the same type of consumers, these consumers would undoubtedly be misled into believing that Castro's products were manufactured by Ferrero. However, the court ruled that JINNUO CHOCHER was sufficiently different from the word mark FERRERO ROCHER and, consequently, there was no infringement of Ferrero's word mark.
The court also ruled that all of Ferrero's registered trademarks are well-known marks, which benefit from greater protection. In addition, the court held that Ferrero's chocolate ball, in conjunction with its golden wrapping paper and white label, is a well-known unregistered mark.
With regard to passing off, the court considered the following elements to determine whether Ferrero had acquired a reputation in its marks:
- the length of time during which the marks had been used;
- the nature of this use and how much was invested in advertising the mark and bringing it to the attention of the public;
- the means used in order to establish a link between the trademark and the product;
- whether consumers knew the identity of the manufacturer; and
- whether the demand for the product was linked to the reputation of the manufacturer.
The court concluded that:
- Ferrero had invested substantial resources (both in terms of effort and money) to build the reputation of the Ferrero brand in Israel; and
- Ferrero's efforts had borne fruit, as its product was recognized by Israeli consumers.
The court also considered whether Castro's acts constituted a misrepresentation (ie, the second element required to establish passing off). The court decided that because the appearance of the Jinnuo Chocher product was almost identical to that of Ferrero's chocolates, there was a real likelihood that consumers would be misled into believing that the Jinnuo Chocher chocolates originated from Ferrero.
In addition, the court ruled that Castro's acts violated the Consumer Law, which prohibits sellers from engaging in any activities that may mislead consumers. The court noted that Castro intended to mislead consumers and create confusion as to the origin of the Jinnuo Chocher chocolates.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv
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