Polish wine producer loses dispute over RAFFAELLO mark

In the dispute between Belgian chocolate maker Soremartec, a member of the Ferrero Group, and Polish wine and liquor manufacturer Vinpol over the RAFFAELLO mark, the Polish Voivodeship Administrative Court has ruled in favour of Soremartec.

Soremartec filed a claim against Vinpol with the Polish Patent Office (PPO) requesting the invalidation of Vinpol’s trademark RAFFAELLO SPUMANTE DOLCE SWEET SPUMANTE QUALITA SOPERIORE (Registration 182895) for sparkling wine. Soremartec argued that:
  • Vinpol's mark was confusingly similar to its RAFFAELLO mark, which could mislead consumers as to the origin of the goods; and
  • Vinpol had acted in bad faith by seeking to exploit the established reputation of the RAFFAELLO mark.

Vinpol's mark

Soremartec's mark

Soremartec was aware that Vinpol had registered the word mark RAFFAELLO (Registration 87046) in 1993, as well as other trademarks that included the word ‘Raffaello’, but had not opposed the applications. However, in the present case Soremartec alleged that the two trademarks were visually similar.

To support its claims, Soremartec provided reports on brand recognition and the development of the chocolate praline market in Poland showing that:
  • the Raffaello pralines were among the most popular sweets in that country; and
  • the advertising campaign for the Raffaello pralines was one of the most memorable.
Additionally, Soremartec provided a report on Ferrero Group’s advertising investments in Poland for the period between 2001 and 2005, as well as the sales report for the Raffaello pralines for the period between February 2001 and February 2006. According to Soremartec, this proved that Raffaello had built a reputation in Poland over the years and that demand for the product continued to grow.

Soremartec also pointed out that Vinpol had applied for the registration of two other trademarks, MON CHERI (Registration 194468) and DELICIOUS MON CHERI CHERRY & BRANDY 18 HIGH QUALITY (Registration 203339), the verbal elements of which were identical to other trademarks of the Ferrero Group.

In contrast, Vinpol claimed that there was no danger of misleading the public because wine and pralines are different products.

The PPO ruled in Soremartec’s favour and cancelled Vinpol’s trademark, holding that sweets and alcohol are not completely different, as both products are consumed for pleasure and can be produced by one company and sold together as a set. Therefore, there was a possibility that the public would link the two products and believe that they came from the same company, especially as the graphic elements of the marks were confusingly similar. According to the PPO, this would give Vinpol’s products an unfair advantage on the Polish market that would be based entirely on the reputation that Soremartec had built for the Raffaello pralines.

Vinpol appealed to the Voivodeship Administrative Court, which dismissed the complaint. Considering the evidence provided by Soremartec, the court ruled that:
  • the RAFFAELLO mark was well known in Poland; and
  • Vinpol would take unfair advantage of the mark's reputation and mislead consumers as to the origin of its goods.
Maša Lopicic, PETOŠEVIC, Belgrade  

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