Cape Town - A local, family-run 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 over its trademark, Roscherr’s, which is the surname of the owner.
Ferrero Rocher 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-based business Interactive Trading 716, however, is defending its Roscherr’s trademark and has also 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’s Rocher 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,” the affidavit reads.
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 this trademark were “of the best known confectionery products in the world”.
More than 5 billion pieces of confectionery bearing the Rocher trademark were produced each year. It was further said 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 distinctive 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.
She also set out that 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 further denied the allegations that the goods were similar and that the Roscherr’s trademark was “confusingly or deceptively similar” to any of the 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 in a press release that 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.
An attorney dealing with the matter for Ferrero locally could not be reached on Wednesday.
Healy believed that the case was also 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 the matter could be referred to the high court.
Cape Times