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  • Soremartec SA, a company of the Ferrero group, applied for the recognition of its RAFFAELLO mark as well known
  • The RUPTO rejected the application, finding that consumers associate goods marked with that sign with the Ferrero Group, rather than Soremartec
  • The IP Court Presidium held that both the right holder and its licensees, or any other entity of the group of companies, may be recognised as a source of origin

 

Background

 

Legal framework

Article 1508 of the Civil Code governs the recognition of a trademark as well known. Court practice has developed the provisions of Article 1508 with reference to Article 6bis of the Paris Convention and other applicable international regulations, and stipulated that the necessary conditions for the recognition of a trademark as well known are as follows:

  • The trademark (sign) has become widely known as the result of the applicant’s activity; and
  • Consumers must associate the sign with a certain source of origin.

Therefore, the main issue to be resolved in such cases is the definition of the source of origin.

 

RUPTO decision

Soremartec SA, a company of the Ferrero group, applied for the recognition of its RAFFAELLO mark as a well-known trademark with respect to confectionery.

The Russian Patent and Trademark Office (RUPTO) rejected the application. In particular, the RUPTO referred to the approach established in the IP Court Presidium’s ruling of 11 December 2014 (Case No СИП-35/2014), which is widely used by the RUPTO. According to this approach, only the applicant (the right holder) may be identified as the source of origin of the goods. The RUPTO confirmed the widely-known character of the sign, but pointed out that consumers associate goods marked with that sign with the Ferrero Group, rather than the applicant.

 

Litigation

 

Arguments on appeal

Soremartec filed a lawsuit before the IP Court seeking the invalidation of the RUPTO’s decision. In the plaintiff’s opinion, the evidence provided by it proved that consumers associated the RAFFAELLO mark with the plaintiff as a source of the goods.

The plaintiff also claimed that the RUPTO’s approach to well-known trademark applications was wrong and did not comply with the applicable international regulations. In particular, the plaintiff stated that a group of companies can serve as a source of origin in the eyes of consumers. The RUPTO, however, insisted that its approach was correct in its multiple written submissions and stated that only the applicant can serve as a source of origin.

IP Court decision

On 22 October 2019 the IP Court invalidated the disputed decision and asked the RUPTO to reconsider Soremartec’s application. The judgment pointed out obvious disadvantages of the RUPTO’s decision and stated that the RUPTO had failed to consider certain items of evidence provided by the plaintiff. At the same time, the judgment avoided discussing the RUPTO’s approach to well-known trademarks.

The RUPTO appealed the first-instance court judgment.

IP Court Presidium decision

The Presidium of the IP Court upheld the judgment and rejected the RUPTO’s cassation appeal. Crucially, the Presidium’s ruling contained certain conclusions that modify the current approach of the RUPTO. The Presidium concluded that both the right holder and its licensees, or any other entity of the group of companies, may be recognised as a source of origin of the goods, if the consumers associate the sign with any of these entities and believe that such entities are connected to each other.

Comment

The Presidium’s ruling is likely to have a significant impact on the RUPTO’s practice concerning well-known trademark applications, since it modifies the RUPTO’s current approach.

The court case number is СИП-196/2019.

A.Zalesov & Partners represented Soremartec SA before RUPTO and the court

 

Vladislav Ryabov

A.Zalesov & Partners

 

This article first appeared on WTR Daily, part of World Trademark Review, in (February/2020). For further information, please go to www.worldtrademarkreview.com