Luxembourg company Soremartec S.A. (Ferrero group) has achieved recognition of the Raffaello trademark as well-known in Russia.
Soremartec S.A. filed an application for recognition of TM Raffaello as well-known in relation to goods of the 30th class of ICGS (candies) at the end of 2018.
However, Rospatent refused, referring to the fact that the execution of the trademark was constantly changing – the application was filed with respect to the mark made in the original font with the letters of the Latin alphabet in red with white trim, while the applicant submitted a photograph for 2003, where the verbal element is made in golden brown and another font. Earlier examples of another design of the trademark were also provided. Because of this, Rospatent could not estimate the duration of use of the current version of TM.
In addition, since 2010, Ferrero Russia CJSC, which has concluded a licensing agreement with the Belgian Soremartec S.A., has been selling Raffaello in Russia. However, the applicant did not provide enough documents to confirm the relationship between the Belgian and Luxembourg companies. And the consumer more often associates a product labeled Raffaello with the Ferrero group of companies, but not with Soremartec S.A. According to the survey, 59% of consumers knew that Raffaello confectionery was produced by Ferrero Russia CJSC and 56% of consumers thought that it was Soremartec S.A. the right owner.
Soremartec S.A. filed an appeal, and the Intellectual Property Rights Court in October 2019 annulled the decision of Rospatent. Later, the Presidium of the Intellectual Property Rights Court upheld this decision, and Rospatent filed a complaint with the Supreme Court. However, in May 2020, Rospatent withdrew its complaint and in June decided to recognize the Raffaello trademark as well-known in Russia.