Summer holidays infringements part II

© Ferrero Rocher

So, what happened in the Ferrero ice cream opposition?

A quick rewind: in September 2023, we published a blog post about the opposition filed by a Polish company against the FERRERO ROCHER figurative trademark application, based on its earlier trademark featuring a similar-looking ice cream (see image).

Can we speak of a likelihood of confusion?

Visually, the similarities between the depicted ice creams are clear: a round-shaped ice cream on a wooden stick, coated in crunchy chocolate. But how distinctive is a round-shaped ice cream on a stick in the ice cream market, really? Ferrero Rocher argues that this type of ice cream is common and supports this with evidence of other similar ice creams on the market. The Opposition Division of the European Union Intellectual Property Office (EUIPO) agrees with Ferrero Rocher's argument: the shape of the ice cream is not distinctive and is descriptive of the product.

Looking at the other elements of the marks, the Opposition Division considers that verbal elements generally have a stronger impact on the consumer than figurative elements. As such, the consumer will focus on ‘Jeżyki’ in the earlier mark, as shown on the ice cream stick. The Opposition Division considers this a clear indication of origin. Since the only common element from a visual perspective is the non-distinctive shape of the ice cream, the marks are considered to have very low visual similarity. Aurally and conceptually, the marks are not similar at all.

The differences between the marks—especially the distinctive verbal element ‘Jeżyki’ in the earlier mark, the verbal element ‘FERRERO ROCHER’ in the contested mark, and the overall layout and various figurative elements of the contested mark—lead to a different overall impression for the consumer. The fact that the products are identical is not enough to establish a likelihood of confusion.

In short: descriptive remains descriptive—no matter how deliciously it's packaged. Trying to register a shape through a workaround (like adding a word to a 3D mark) doesn't fly in this case.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.