Meltdown over popular sweet trademark
Ferrero Rocher sues Roscherr family over name on its preserves
AFAMILY-RUN Cape Town jam and preserves producer has found itself in a David and Goliath-like legal pickle.
It is being taken on by internationally renowned confectioner Ferrero Rocher over its trademark, Roscherr’s, which is the surname of the owner.
Ferrero lodged an application with the Tribunal of the Registrar of Trade Marks in South Africa in August for the cancellation of the Roscherr’s logo trademark registration.
Montagu business Interactive Trading 716 is defending its Roscherr’s trademark and lodged a counter-application for the partial cancellation of five of Ferrero’s registered trademarks.
The Ferrero Group’s director of intellectual property, Daniele Lingua, said in an affidavit, which forms part of the application, that the Roscherr’s trademark was “confusingly similar” to Ferrero Rocher’s trademark registrations and marks.
“The marks look the same and sound the same. This is significant, considering that the word ‘Roscherr’s’ is the dominant element of the respondent’s (Interactive Trading 716) trademark, and the element likely to leave an impression on the mind of the consumer,” she said.
Lingua told of how Ferrero – which was “famous for” products such as Rocher, Tic Tac and Nutella – launched its “iconic” Rocher trademark in 1982 and that products bearing the trademark were “of the bestknown confectionery prod- ucts in the world”.
More than 5 billion pieces of confectionery bearing the Rocher trademark were pro-
Marks are known only in relation
to chocolate
duced each year and were sold in more than 140 countries, said Lingua.
It was further said in the affidavit that the goods covered by the Roscherr’s trademark registration were similar to those for which Ferrero had registered and used its Rocher trademarks.
But in an answering affidavit, in which Interactive Trading 716 also sets out its grounds for the counter-application, the business’s owner, Zelda Roscherr, contended that the Roscherr’s trademark had been adopted and used in good faith, and comprised a logo that was distinguishable from the Ferrero marks.
She said the Roscherr’s trademark was not a reproduction of the Rocher trademark. Roscherr was also her family name.
“If one or more of the Ferrero marks are well known, that can only be so in relation to chocolate confectionery, which cannot be regarded as similar to Interactive’s goods of interest,” Roscherr said in her affidavit.
She said Interactive Trading 716 was a family-owned and managed business that produced a range of products that offered a healthier alternative to regular jams and preserves.
Roscherr denied the allegation that the goods were similar and that the Roscherr’s trademark was “confusingly or deceptively similar” to any Ferrero marks.
She said the visual elements of Interactive’s mark – which included a striking red font and a teaspoon carrying a dollop of jam – distinguished the marks.
An attorney representing Interactive Trading 716, Dale Healy, of law firm Adams & Adams, said one of the bases for the counter-attack was that Ferrero had registered its trademarks “without the intention of using them in relation to any goods in class 30 other than chocolate confectionery, specifically chocolate pralines”. Class 30 covered foodstuffs such as spices, sugar, honey, cocoa and chocolate confectionery.
Ferrero is yet to submit answering papers in relation the counter-application.
An attorney dealing with the matter for Ferrero could not be reached yesterday.
Healy believed the case was likely to “test the parameters of the legal principle that a personal name may be used as a trademark, provided that the use is in good faith and consistent with fair practice”.
He said that while affidavits were being submitted to the Tribunal of the Registrar of Trade Marks, the matter could later be referred to the high court.