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FERRERO ROCHER v. ROSHEN

March 02, 2017

Ukrainian undertaking Dochirnie pidpryiemstvo "Kondyterska korporatsiia" Roshen" owns several international registrations with common verbal element „ROSHEN”, namely ROSHEN (word.), Nr. WO 741975, ROSHEN (fig.), Nr. WO 1020077, FINE CHOCOLATE ROSHEN SINCE 1996 Elegance (fig.), Nr. WO 1097449, FINE CHOCOLATE ROSHEN SINCE 1996 Екстрачорний, reģ. Nr. WO 1103380), FINE CHOCOLATE ROSHEN SINCE 1996 Екстрамолочний, reģ. Nr. WO 1102759, which was subsequently designated to Latvia.

Well-known Italian undertaking FERRERO S.P.A. through intermediary of patent Attorneys of Agency TRIA ROBIT filed oppositions against above-mentioned international registrations. Oppositions were based on erlier international figurative trademark registration „FERRERO ROCHER” Nr. WO 799 546. Moreover, all oppositions were based on provisions of Article 7 part 1 paragraph 2 (the likelihood of confusion of trademarks) and Article 7 part 1 paragraph 2 (imitation of well-known trademark) of the Act «About Trademark and indications of geographical origin».

On 2 December 2016 the Board of Appeals of the Patent Office of the Republic of Latvia has heard the appeal. After the examination of the case materials, the Board of Appeals found that taking into consideration that phonetic and visual difference between compared marks, it is clear that they are not confusingly similar according to Article 7 part 1 paragraph 2 of the Act. However, when analyzing if there exist circumstances required by the Article 8, the Board of Appeal considered that case evidences are sufficient to consider trademark FERRERO ROCHER – both word trademark and figurative trademark – to be well-known trademark among Latvian consumers already before subsequent designation date of the contested international trademark registrations to Latvia in respect of chocolate goods that are considered to be identical and similar goods to the goods of class 30 of the contested trademarks. Moreover, the Board of Appeals found that dominating elements of compared marks "ROCHER" and "ROSHEN" are visually and phonetically similar. Their mutual similarity is strengthen by the fact that both word elements are not in Latvian language and Latvian consumers will perceive them as words having any semantic meaning, but major part of letters, syllables and sounds are similar in these words. Thus, the Board of Appeal agreed with the arguments of the applicant that the dominant element of the contested marks "ROSHEN" may be perceived as an imitation of well-known mark FERRERO ROCHER.

In accordance with above-mentioned, the Board of Appeals decided to satisfy oppositions filed by the Italian undertaking FERRERO S.P.A. aganced international trademarks registrations, namely ROSHEN (word), Nr. WO 741975, ROSHEN (fig.), Nr. WO 1020077, FINE CHOCOLATE ROSHEN SINCE 1996 Elegance (fig.), Nr. WO 1097449, FINE CHOCOLATE ROSHEN SINCE 1996 Екстрачорний, reģ. Nr. WO 1103380), FINE CHOCOLATE ROSHEN SINCE 1996 Екстрамолочний, reģ. Nr. WO 1102759, owned by the Ukrainian undertaking Dochirnie pidpryiemstvo "Kondyterska korporatsiia" Roshen", and dismiss international trademark registrations protection in Latvia .

FERRERO S.P.A was successfully represented by Mr. Bronislavs Baltrumovics, Trademark Attorney & Senior Lawyer of Agency TRIA ROBIT.

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