On February 20, 2020, the Russian Intellectual Property Court satisfied an appeal filed by «A.Zalesov & Partners» Patent & Law Firm in the interest of «Ferrero» S.p.A. against the decision of Rospatent refusing in the registration of a renewed box for the famous «Tic Tac» candies.
In its decision in the case SIP-860/2019 the IP Court formulated the following principles Rospatent should follow in examining three-dimensional trademark applications claiming for protection of packagings:
- the lack of distinctiveness of packaging is not presumed, Rospatent should prove, that the packaging claimed is commonly used on the market, is traditional and unavoidable;
- the fact that the applicant already has protection for this type of packaging as an earlier 3D trademark should be taken into consideration by Rospatent: Rospatent should follow the same principles regarding distinctiveness they followed once unless the distinctiveness was challenged by a third party in due course; another approach is unconstitutional;
- Rospatent cannot reject the results of consumers' poll referring to the mistakes in methodology without serious evidence.
The IP Court agreed with the claimant, that since 98% of respondents who saw the simple box without any additional brands on it answered that it is used for «Tic Tac» brand, that means that the box is distinctive and can be protected as a 3D trademark. The IP Court did not return the case back to Rospatent but ruled to grant protection to the international trademark registration in question in Russia. Irina Ozolina, Senior Partner of «A.Zalesov & Partners» Patent & Law Firm, and Vladislav Ryabov, Senior Associate, represented «Ferrero» S.p.A. before the IP Court in this dispute.