Pralines Shape Found not Distinctive in Romania

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Published in “Managing Intellectual Property”, 2011

Bucharest Tribunal has recently rejected, in the first procedural phase, the action filed by the producer of “RAFAELLO” white chocolate pralines, covered in coconut against the distributor of “LUMAR” wafers products in Romania for lacking grounds. “LUMAR” wafers products have a spherical shape, are filed with cream and coated in coconut.

The complainant has asked the court to order the defendant to cease any marketing, import, distribution activities in Romania with respect to the “LUMAR” wafers products, as such are infringing its trademarks protected in Romania. In supporting its claim, the complainant has invoked two trademarks, protected on the Romania

Rafaello

n territory, registered for goods in class 30:

– the tri-dimensional international trademark “Rafaello”,

no. 729178 /18.01.2000, and

Rafaello

– the figurative bi-dimensional international trademark

“Rafaello”, no. 798984 / 20.02.2003.

Among other arguments, the complainant has claimed that the defendant is infringing its trademark rights due to the fact the marketed “LUMAR” products have a shape that is similar to the one of its “RAFAELLO” pralines.

The court found this claim as inadmissible, due to the fact that, through the registration of the above cited trademarks, the claimant has not acquired rights over the tri-dimensional shape of the “praline covered with coconut fudges”.

Thus, the court found that the tri-dimensional international trademark “Rafaello “, no. 729178 protects in fact a packaging having certain graphical distinctive elements, but not the shape of the product.

Rafaello

With respect to the figurative international trademark

“Rafaello”, no. 798984 the court found that it protects the bi-dimensional, flat image of the praline covered with coconut fudges and not the shape thereof.

Rafaello

Moreover, the court stated in its decision that the shape of complaint’s pralines is lacking any distinctive character, as it is being used by several producers of such products.

In addition, the court found that there is no inner distinctiveness and also no acquired distinctiveness through use in relation to the shape of the praline covered with coconut fudges has been proven.
In conclusion, the court found that the complainant’s trademarks do not grant him any right to forbid other companies from producing or marketing pralines covered with coconut fudges, and that the marketing by the defendant of waffles covered with coconut is not infringing the complainant’s rights.

In what concerns the packaging of the “LUMAR” products, the court found that such is not similar with the one of the “RAFAELLO” products, especially considering that such packaging is bearing trademarks that are protected in the name of the defendant on the Romanian territory, also for goods in class 30.

The decision of the Bucharest Tribunal may be further appealed before the Bucharest Appeal Court.

This decision of the Romanian court comes in furtherance of the series of ECJ decisions regarding the lack of distinctive character, such as the ones referring to the Bounty chocolate bar or Lind’s rabbits, reindeer and small bells chocolate products.

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