Confectionery manufacturer Guangdong Funway Food Co., Ltd. filed several lawsuits against our client, Ferrero S.p.A., on the early termination of the legal protection of «СЮРПРИЗ» trademarks.
The plaintiff claimed that when introducing a chocolate egg with a toy into civil circulation, our client uses other trademarks, namely «Kinder Surprise» and «Киндер Сюрприз», and the trademark «СЮРПРИЗ» itself is not used, since it has no independent meaning.
We proved that the trademark was properly used by the right holder, and the use of the trademark in conjunction with other trademarks does not change the essence of the trademark and does not limit the protection granted to it.
After the Court refused to satisfy the plaintiff's claims regarding the verbal trademark «СЮРПРИЗ» under RU certificate No. 382808, the company tried to appeal the decision of the court of the first instance to the Presidium of the Court. The Presidium supported the arguments of the IP Court and upheld the decision of the first instance.
On January 18, 2023, the IP Court issued a second decision denying the claims of Guangdong Funway Food Co., Ltd. in relation to the figurative trademark «СЮРПРИЗ» under RU certificate No. 689359 and recognized the fact of its use as proven.
Ferrero S.p.A. was represented in this dispute by Senior Partner of «A.Zalesov & Partners» Patent & Law Firm Irina Ozolina and associate Julia Kolomytseva.
For more details about the case, please refer to the link.