Raffaello mark is cancelled

Russian Federation
The Moscow Arbitration Court has ordered that the Russian Patent and Trademark Office (PTO) cancel the registration of a figurative trademark (International Registration 798984) owned by Belgian company Soremartec SA, which is affiliated with the Ferrero Group (Case A40-3631/09-93-28, June 2 2009).

The trademark consisted of the photographic image of a sweet in the form of a pink, white and beige 'fluffy' ball known as the Raffaello. The PTO originally refused to register the mark, but protection was eventually granted in 2004 under the Madrid Agreement concerning the international registration of marks.

In 2007 Soremartec filed suit against Russian company Landrin for trademark infringement. Soremartec claimed that the Ferrero Group had entered the Russian sweets market in 1995 and that, 10 years later, Landrin had started to produce sweets similar to the Raffaello.

In 2008 the Moscow Arbitration Court found that Landrin had infringed Soremartec's trademark rights and awarded statutory damages in the amount of Rb500,000 (approximately $16,000). Landrin appealed, and the dispute was eventually resolved by the Supreme Arbitration Court of Russia, which ruled in favour of Soremartec. Moreover, in a decision dated April 14 2009, the court reaffirmed the decisions of the lower courts.

In response, Landrin decided to challenge the validity of Soremartec's trademark. Landrin asserted that the mark lacked distinctive character since it consisted of a realistic image of the product for which it was registered. The PTO refused to cancel the mark for certain goods ("confectionery and chocolate articles"), finding that the mark had acquired distinctiveness through use in relation to those goods. The PTO concluded that Soremartec had successfully:

  • provided evidence of the long and intensive use of the mark in Russia; and
  • demonstrated that the mark was well known by consumers.
Landrin successfully appealed to the Moscow Arbitration Court. The court held that the decision of the PTO was unlawful and ordered that the latter cancel the registration of the mark.

Soremartec has now appealed to the Ninth Arbitration Court of Appeals. The appeal is expected to be heard on August 4 2009.
Nikolay Bogdanov, Gorodissky & Partners, Moscow

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