Ferrero International S.A.

v.

Montresor (Zhangjiagang) Food Co., Ltd. and Tianjin Economic-Technological Development Area Zhengyuan Marketing Co., Ltd.

(2006) Min San Ti Zi No.3

  • Keyword: Distinctiveness as a whole
  • Source: SPC's Guiding case No.47; SPC Gazette (Issue 6, 2008)
  • Relevant provisions: Article 9 of the Provisions

Procedure

The plaintiff Ferrero International S.A. (Ferrero), which was established in 1946 in Italy, has produced and launched the "FERRERO ROCHER" chocolates since 1982. The "FERRERO ROCHER" chocolates began to enter the Chinese market in February 1984. Since 1993, Ferrero progressively increased the investment and promotion of the "FERRERO ROCHER" chocolates in China, which enabled the products to acquire a high degree of popularity and reputation.

The defendant Montresor (Zhangjiagang) Food Co., Ltd. (Montresor), established in 1991, produced its own chocolate named "Jin Sha TRESOR DORE" with a packaging and decoration similar to the Ferrero's "FERRERO ROCHER" chocolates.

Ferrero filed an action with Tianjin No.2 Intermediate Court against Montresor for unfair competition. On February 7, 2005, the Court dismissed Ferrero's claim holding that the decoration of the packaging  of  "FERRERO ROCHER" is a common design which is not unique and that the consumers may not be confused or misled as the information indicated on the packaging (trademark and manufacturer) is different.

On appeal the Tianjin High Court rendered a judgment on January 9, 2006, overruling the first instance judgment and holding that the "FERRERO ROCHER" chocolate is a famous product, that its design/decoration is unique, and therefore, that it should be recognized as the "unique decoration of a famous product" as provided in the Anti-Unfair Competition Law. The court recognized the similarity of the decorations, confirmed the act of unfair competition and ordered the defendants to pay RMB 700,000 as compensation.

Montresor filed an application for retrial before the SPC.

Judgment

On March 24, 2008, the SPC rendered a judgment upholding the second instance judgment, but lowering the damage to RMB 500,000.

Comment

The guiding significance of this case includes, the territory for determination of famous products, the determination of unique decoration and the overall consideration for consumer confusion. Firstly, for a product that is already known internationally, it is still necessary to consider whether it is known to the relevant public within the territory of China. Secondly, it is necessary to establish whether the various elements of the packaging and decoration are able to create noticeable features, thus constituting the "unique" decoration of the product. Thirdly, the determination of consumer confusion is to be established on the basis of an overall impression. Even though there may be differences in manufacturer names, trademarks, price, quality, taste and consumption levels between the two products, the degree of similarity is still likely to mislead the consumers.

Editor's note

This case is one of the ten cases selected by the firm that are relevant to certain articles of the "Provisions of the Supreme People's Court on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights" (the Provisions) and focused on different issues of the Trademark Law. The cases are mainly selected from the SPC's Guiding cases, Gazette cases, Annual cases, and particularly, from the cases which were released on the SPC's press conference of the Provisions.

The Gazette cases, beginning in 1985, are published in the Gazette of the Supreme People's Court of the People's Republic of China ("Gazette") which is focused on the typical or model cases.

In 2008, the SPC started to publish an annual report on IPR cases, and since then, dozens of typical or model cases have been included each year.

Since 2010, the SPC also annually announces the year's Ten Intellectual Property Right Cases and Fifty Model Cases of Intellectual Property.

As for the Guiding cases, unlike the Gazette cases, annual cases or other model or typical cases, the Guiding cases are the first kind of cases that are given clear authority, and, they are subject to a particular selection and adoption process, much like judicial interpretations. In adjudicating similar cases, courts are required to consult Guiding cases.

During the press conference held on January 11, 2017, for the presentation of the Provisions, the SPC released several cases related to the Provisions, among which, the "Qiaodan case", the "007 BOND case" and the "Haitang Bay case".

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