The mark was duly registered on 23.08.2012 (the application was filed on 27-03.2012) in the Community Registry no. 010760676 at the Office for Harmonisation in the Internal Market (OHIM), published in Community Trade Marks Bulletin no. 2012/162 on 27.08.2012.
Legal representatives of the Italian company report that "Spanish company Bioconservacion SA tried to register the "Retarder" mark on 08.06.2012 but such registration was DENIED."
In addition, the Retarder mark had already been registered in Italy as figurative on 27.01.2003, as can be seen in the chart below.
Click here to enlarge.
Retarder s.r.l. started cooperating with Bioconservation, a producer of potassium permanganate, in the second half of 2001. The Italian company explains that "we are a company that purchases and re-sells this product according to specific quality needs. We re-sold the product under the RETARDER mark, and Bioconservacion SA labelled it for us with adhesives we provided. Bioconservacion though is not our sole supplier and, once it did not comply with some of the requisites we demanded any more (i.e. use of virgin unrecycled material), we decided to end the cooperation. The Spanish company though contacted our Italian clients directly to try and sell its product, which it called 'Retarder® granular'."
"Having read a Bioconservacion article published on 21.09.2012 on which the Retarder® mark appeared, we worried and checked the OHIM website immediately, and in fact their application to register said mark was there."
Retarder Srl lawyers report that they have immediately issued a warning to the company not to use the mark as "Bioconservacion SA used it for advertising purposes and for the sale of a class 1 chemical product i.e. 'granular - ethylene absorber' without any authorisation."
"The Retarder® mark was used:
1) in the articles published by Bioconservacion on FreshPlaza on 19th and 21st September titled "Bioconservacion: sole producer of Retarder® since 1996" and "There is only one producer of Retarder® in the world and it is manufactured by Bioconservacion";
2) on the website of the company with the following caption "Nuestro granulado, al que hemos bautizado como Retarder®..."
"We would like to point out that the Retarder trade mark is owned solely by Retarder Srl, as it registered it at the Ohim in 2012 and in Italy in 2003.
2) on the website of the company with the following caption "Nuestro granulado, al que hemos bautizado como Retarder®..."
"We would like to point out that the Retarder trade mark is owned solely by Retarder Srl, as it registered it at the Ohim in 2012 and in Italy in 2003.
The application presented by Bioconservacion SA on 08.06.2012 was DENIED on 07.09.2012. This also means that, when Bioconservacion SA advertised its product on the FreshPlaza website on 19th and 21st September, it already knew its application had not gone through and therefore misled final consumers."
"Bioconservacion SA cannot use the Retarder mark nor the ® initial because its application was denied. Them selling products under that mark is therefore wrongful as well as deceitful, as it misleads final customers as regards the origin of the product."
"Bioconservacion SA was warned to cease using the mark, a behaviour aggravated by the fact that it tried to sell their product to Italian customers as "original", thus implying that it was sold by the Italian company which it is not."
Retarder lawyers conclude that "these practices shall be assessed in a Court of Law as they not only damaged Retarder Srl, which has always sold excellent products that are even better than those of the Spanish company, but also misled final customers, as they made them think that there are first and second class granulars."
"Retarder Srl is a highly professional company as its granular is periodically checked and its composition certified. Used products are collected and taken to a dump."
The Italian company concludes that "we were attacked at a commercial level, but we know our product is of premium quality. We have been available on the market for years, and the market itself will show that we are right."
Contacts:
Aldo Rivoira
Sales manager
RETARDER SRL
Via Pomarolo 124
12039 Verzuolo (CN)
Tel.: (+39) 0175 85680
Fax: (+39) 0175 88341
Cell.: (+39) 348 5259129
Email: aldo.rivoira@retarder.it
Web: www.retarder.it