Scribd
Upload
15 views

2021 Ferrerorochereng

Uploaded by

kothardivya
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
15 views

2021 Ferrerorochereng

Uploaded by

kothardivya
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
You are on page 1/ 4

BO

FERRERO ROCHER:
Unauthorized use of the
three-dimensional trademark.

“Ferrero Rocher” represents a story of success


of a family business, founded by Piera and Pietro
Ferrero who after World War II transformed
a pastry shop into Italy’s first manufacturing
company. Together with their son Michele they
launched their first products and Michele played
a key role in the company’s expansion abroad. In
1956, the company expanded with a large factory
in Germany, then France and other countries in
Europe, becoming today a worldwide known
brand with factories in different continents.

“Ferrero Rocher” is made with the best hazelnuts


that are dipped in a smooth chocolate cream
and surrounded by crunchy wafers and pieces
of hazelnuts; whose presentation consists of a
golden wrapper resting on a brown corrugated
paper with golden lines. Becoming the famous
golden chocolate.

The facts FERRERO S.P.A., is the owner of three trademarks


in Bolivia, among them a three-dimensional
design trademark:
During the year 2021 we became aware by
investigations performed that in the markets
118272-C, Three-Dimensional
of the city of La Paz - Bolivia, chocolate sweets
Design Trademark , Class 30,
were being offered with a trade dress similar to bakery and confectionery,
FERRERO ROCHER sweets. chocolate and chocolate
products.
Therefore, we investigated the origin of these products and obtained information
about the company that imported them and its address.

Original
Product

Imitation
Product

Actions taken

In view of this situation, and having identified the importing company that
was distributing the products to different markets in the city of La Paz, it
was ordered to cease the use, distribution and commercialization of products
imitating the FERRERO ROCHER trade dress, to provide information regarding
the origin of the merchandise, to destroy the infringing merchandise and to
pay the costs incurred.

The notarial notice had a positive result, the legal representative of the
importing company contacted us in order to settle the matter out of court.

About Trade Dress and unfair competition

Trade Dress refers to the commercial appearance of a product or service, it


protects the total image of the product, which may include patterns of colors,
textures, sizes, drawings, shapes and the placement of words, graphics and
decorations on the product or its packaging.
In Bolivia and under the regulations of the Andean Community - Decision No.
486 the figure of the Trade Dress is not recognized as such; however, it is part
of the vast doctrine and case law on intellectual property and in countries
such as Bolivia, its registration and protection is possible by registering a
three-dimensional trademark.

The trade dress is a construct related to unfair competition, offices such


as the Superintendence of Industry and Commerce (SIC) of the Republic
of Colombia and the National Institute for the Defense of Competition and
Protection of Intellectual Property (INDECOPI) of the Republic of Peru, have
recognized that “acts of unfair competition involve as well as trademarks, the
appearance of products (or services) in the market (trade dress)”1.

Therefore, based on the case law, on the grounds of articles 2582, 2593 and
267 of Decision No. 486 and 267 of Decision No. 486 and paragraph 2) of
article 694 of the Bolivian Commercial Code, it may be possible to take legal
action before a Civil and Commercial Court for trade dress infringement of
a product or service due to acts of unfair competition.

Out of court settlement

The out of court agreement included the following:

}} the company acknowledged the infringement committed;


}} changed the packaging and presentation of its product for one that does
not imitate FERRERO ROCHER’s trade dress;
}} provided information on the origin of the products;
}} handed over the infringing products for its corresponding destruction;
}} and reimbursed the expenses incurred.

1. Prejudicial interpretation 110-IP-2016


2. Decision 486 – Article 258. - Any act related to industrial property performed within the business sector that is contrary
to proper usages and practices is considered unfair.
3. Decision 486 – Article 259. - The following, among others, constitute acts of unfair competition involving industrial property:
a) any act capable of producing confusion, by any means whatsoever, with respect to the business establishment, the
products or the industrial or commercial activity of a competitor; (...)
4. Bolivian Commercial Code – Article 69.- A trader may be deemed to have committed acts of unfair competition if: 2) he/
she makes use of assumed names, distorts known names or adopts distinctive signs that may be confused with the products,
activities or advertising of other competitors.
Destruction of the infringing products

Following the signed out of court agreement, there were handed over several boxes
of chocolates that were confusingly similar to FERRERO trade dress to be submitted
to destruction.

Conclusions

}} There were being commercialized in the market of the city of La Paz products
that imitated and were confusingly similar due to its appearance (trade dress) to
FERRERO ROCHER sweets.
}} The origin of these products was investigated and the importer was identified,
therefore we proceed to order the cease of the commercialization of the products
imitating the FERRERO ROCHER sweets.
}} It was obtained a suitable response to the written demand, solving the matter
out of court
}} The importer and distributor of the product in imitation of FERRERO ROCHER
chocolates modified the appearance and packaging of the product, in order to
ensure that it was distinctive and to prevent it from taking advantage of the
positioning of the FERRERO ROCHER brand in the Bolivian market.

by:

Dr. Dr. Dr.


Lucía Cantera Diego Rocabado Gardenia Revollo
Senior Associate Lawyer Lawyer
[email protected] [email protected] [email protected]

[email protected]
www.cervierimonsuarez.com

You might also like