Italian confectionery giant, Ferrero S.p.A., has initiated legal proceedings against local jam producer, Roscherr’s Fine Foods. Ferrero is known worldwide for its FERRERO ROCHER chocolate pralines.

In August this year, Ferrero applied for the cancellation of the ROSCHERR’S logo trade mark, registered in class 29 for “Jams; preserves; dried fruit; nuts”. The logo was created with the assistance of an outside design agency and is characterised by a distinctive red font and a spoon carrying a dollop of jam.

Roscherr’s Fine Foods is a family-owned and managed business based in the town of Montagu in the Western Cape. The name Roscherr’s comes from the name of its owner, Zelda Roscherr.

Roscherr’s jams and preserves are made using only locally-sourced, choice-grade fruits and contain no added cane sugar or any artificial flavourants or colourants.  Its factory staff comprises a handful of families from the local community. With financial assistance from the Department of Trade and Industry, a new factory was built in 2010 adhering to international food health and safety standards. This replaced the former facility.

Armed with a great business model and a unique brand, Roscherr’s Fine Foods seems set for success. But, the company will first have to save its brand from the attack launched on it by Ferrero, a company with notoriously deep pockets.

Ferrero is relying on five  trade mark registrations, all in class 30, covering foodstuffs such as sugar, spices, baking powder, yeast, ice, treacle, honey, cocoa, and chocolate confectionery, to name only some of the goods. Its registered trade marks include, amongst others, FERRERO ROCHER and ROCHER. Ferrero’s argument is that jams are similar to chocolates and that the average consumer will be confused into believing that Roscherr’s jams and preserves are a spin-off its FERRERO ROCHER brand.

Roscherr’s Fine Foods is defending its trade mark and has launched a counter-application for the partial cancellation of the five registered trade marks relied upon by Ferrero. The basis for the counter-attack is that Ferrero registered its trade marks without the intention of using them in relation to any goods in class 30 other than chocolate confectionery, specifically chocolate pralines, and, in addition, that the trade marks have not been used in relation to any other goods in the last 5 years, if at all.

Ferrero will be entitled to answer the counter-application and will have to give evidence of its intended and actual use of its trade mark. The onus will be on it to prove the use of its trade mark, if it alleges use in relation to goods other than chocolate confectionery.

If Roscherr’s Fine Foods succeeds in its counter-application, then the legal questions will be: firstly, whether jams, preserves, dried fruit or nuts are similar to chocolate confectionery and, secondly, whether the average consumer, on encountering the ROSCHERR’S logo on jams, preserves, dried fruit or nuts, is likely to be confused into believing that those goods are goods produced by Ferrero or under licence from it. In answering these questions, case law dictates that the court should consider such factors as the nature of the respective parties’ goods, how they are used or consumed and for what purpose, how they are sold, and what the distribution channels and trade channels are. Roscherr’s Fine Foods has given evidence to the effect that, on all the legally-recognised grounds for comparison, the goods are not similar.

The case is also likely to test the parameters of the legal principle that a personal name may be used as a trade mark, provided that the use is in good faith and consistent with fair practice.  One of the defences raised by Roscherr’s Fine Foods is that the brand owes its existence to the surname of its owner and that the creation of a unique brand identity demonstrates good faith and fair practice.

The litigation is still at its early stages and the matter is unlikely to be heard before the end of 2015. Leading IP law firm, Adams & Adams, is representing Roscherr’s Fine Foods in the matter.

Written by Dale Healy – partner at Adams & Adams