Polish Wine Producer Loses against Ferrero over Raffaello Trademark

On July 29, 2011, the Polish Voivodeship Administrative Court (county) ruled in favor of the Belgian chocolate maker Soremartec, member of the Ferrero Group, in its trademark opposition case against Vinpol, a Polish wine and liquor manufacturer, over Ferrero’s well-known Raffaello trademark.

Soremartec filed a claim against Vinpol with the Polish Patent Office (PPO) requesting invalidation of Vinpol’s sparkling wine trademark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895.

Soremartec argued that the two marks are confusingly similar, which can mislead the consumer as to the origin of goods, and that Vinpol acted in bad faith seeking to unfairly exploit the established reputation of the Raffaello trademark.

Soremartec had been aware that Vinpol registered a word mark RAFFAELLO R-87046 in 1993 and subsequently other trademarks that included the word ‘Raffaello’ but did not oppose them. However, Soremartec in this case opposed the visual, graphic similarity of the two trademarks.

To support its claims, Soremartec provided reports on brand recognition and the development of the praline market in Poland showing that the Raffaello pralines were among the most popular sweets in Poland and that their advertising campaigns were one of the most memorable. Additionally, Soremartec provided a report on Ferrero Group’s advertising investments in Poland in the period 2001-2005, as well as the sales report for Raffaello pralines for the period February 2001-February 2006, proving that Raffaello has built a reputation in Poland over the years and that the demand for its products continues to grow.

Soremartec also emphasized that Vinpol applied for two other trademarks, MON CHERI R-194468 and Mon Cheri CHERRY BRANDY & Delicious 18 High Quality R-203339, the verbal elements of which are identical to Soremartec’s trademark.

Vinpol on the other hand claimed that there was no danger of misleading the public because wine and pralines are different products.

The PPO ruled in Soremartec’s favor and cancelled Vinpol’s sparkling wine trademark registration, claiming that, apart from the proven reputation of Raffaello pralines in Poland, sweets and alcohol are not completely different products as both are consumed for pleasure and can be produced by one company and sold as a set. The PPO thus argued that there is a possibility for the public to link these two products and believe they came from the same company, especially if the trademarks’ graphic elements are confusingly similar. According to the PPO, this would give Vinpol’s products unfair advantage on the Polish market entirely based on the reputation that Soremartec has been building for the Raffaello pralines.

Vinpol filed a complaint against the PPO’s decision and the case went to the Voivodeship Administrative Court (VAC), which dismissed the complaint. Considering all the evidence Soremartec provided, the VAC ruled that Soremartec’s trademark Raffaello is renowned and that Vinpol would be taking unfair advantage of Soremartec’s trademark reputation and misleading consumers about the origin of the product.

For more information, please contact Masa Lopicic at our Balkan Regional Office.

Source: Polish IP news portal, Rychlicki.net