On January 25, 2022, the Russian IP Court upheld the decisions of the lower courts and dismissed the cassation appeal of the importer of counterfeit goods in an administrative case of illegal use of «SURPRISE» designation on confectionery products, which are protected as «SURPRISE» trademarks series owned by «Ferrero» S.p.A.
The IP Court considered two cassation complaints and dismissed them both while leaving the decisions of the court of the first and appellate instances in force, which are in favor of «A.Zalesov and Partners» Patent & Law Firm’s client.
Based on the case materials and making sure that the importer illegally uses the designation «SURPRISE» on confectionery products in the form of eggs, while «Ferrero» S.p.A. owns a series of trademarks «SURPRISE» for goods in the 30th class of the Nice Classification, the court of first instance brought the importer to administrative liability with the seizure of counterfeit goods.
In the appeal and cassation instances, the importer of the counterfeit goods raised a question of ownership of the counterfeit goods, referring to new case evidence and denying that he was the owner. The importer tried to argue that such measure as confiscation of imported goods shall not be applicable if the owner of such goods had not been notified of the litigation and thus could not have protected his right of ownership.
Associates of «A.Zalesov & Partners» managed to prove that the importer was still liable for importing counterfeit goods and that the goods which were illegally marked with the designation «SURPRISE», confusingly similar to the trademarks of «Ferrero» S.p.A., should be seized. «Ferrero» S.p.A. has been represented in this dispute by Senior Associate Anastasia Zalesova and Senior Partner Irina Ozolina. Find more details about the case through the link.