UAE – Conflict Between ROSHEN and ROSHER

VS.

Our client, Dochirnie pidpryiemstvo “Kondyterska korporatsiia “Roshen”, filed an application for registration of the mark ROSHEN & Device on 10 February 2014 in class 30; the application was accepted and published in the UAE Gazette on 1 May 2014 subject for the opposition period of one (1) month.

Said application was opposed based on the following points:

• Similarity between our client’s mark and the trademark ROSHER in terms of pronunciation, general appearance, and designated goods;
• The opponent claimed that the registration of ROSHEN will mislead the public about the origin of the products since both marks had the same pronunciation and general appearance, and
• The opponent claimed that the trademark ROSHER is a well-known trademark owned by “Ferrero spa,” and therefore, should not be registered in the name of our client.

We submitted our counterstatement based on the following:

• Dissimilarity between our client’s mark and the opponent’s mark, ROSHER, in terms appearance, design, and pronunciation;
• The consumer can easily distinguish between the products;
• Our client’s mark, ROSHEN, is registered in forty (40) countries worldwide without any objection by the relative trademarks offices, and
• The trademark ROSHEN is also the commercial name for our client.

The opposition decision was issued confirming the dissimilarities between both marks; it also stated that consumers could easily distinguish between ROSHEN and ROSHER.

Therefore, the opposition filed by “Ferrero spa” was rejected and our client’s mark, ROSHEN, registered successfully.

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