Italian chocolate maker Ferrero has lost a counterfeit case in a top Ukraine court in relation to its praline brand, Raffaello.
The group was seeking to overturn an earlier ruling that ordered the trademark for its Raffaello product be withdrawn from Ukraine, following an action brought by rival Russian firm, Landrin, over its Waferatto, reports Reuters.
Landrin had lost a case in Russia with the Moscow court ruling that the Waferatto product did infringe the trademark of Ferrero’s praline brand. But Landrin then filed a counter-claim in Ukraine and also sought the cancellation of the Italian firm’s trademark.
Landrin eventually won a court decision in November last year, ordering the Italian trademark be withdrawn from Ukraine. And, yesterday, the High Commercial Court of Ukraine, that country’s highest court for trademark disputes, ruled that this previous decision should be upheld.
"Today's negative outcome of the case is only going to encourage third parties to take advantage of the hard-earned reputation and know-how of foreign investors in Ukraine," Ferrero said in a statement.
Analysts said the ruling could have implications for foreign investments in Ukraine.
The Italian chocolate maker has fought a number of trademark battles in recent years. In 2008, it won a three-year battle against a Chinese firm, Montresor, over the fact it was producing copies of its gold wrapped pralines, Ferrero Rocher.
The Chinese Supreme Court ordering the firm to stop producing its Tresor Dore chocolates and to pay 'symbolic' damages.
The Italian group had bemoaned the fact that its ongoing battle with copycat products in China was hindering its growth in that booming market and that the counterfeiting was eroding the brand's value.
Meanwhile, in April last year, a French court ordered German manufacturer, Candy Team, to pay €200,000 in damages to Italian confectioner Ferrero over trademark infringement. Ferrero cailmed that German firm Candy Team were manufacturing, importing and commercializing sweets in France under the name ‘Pick Up’ with packages that were identical to its Tic Tac products.
The Paris Civil Court of First Instance, confirmed that Ferrero’s three-dimensional trademark for products in Class 30, including sweets, was valid following a challenge brought by the company Candy Team and ruled that Candy Team has sought to promote its own products by taking undue benefit from the investments made by Ferrero for its 'Tic Tac' products.
In another similar case, Mars US lost an appeal against a trademark infringement in an Australian federal court involving a rival to its well known Maltesers brand. Both Maltesers and Malt Balls come in red packaging that bears an image of floating chocolate-covered balls. But the crucial difference for the judge was that Malt Balls do not use the word ‘Maltesers’.