Comment Magazine Issue 7

What can businesses
learn from Toblerone?
Chocolate lovers everywhere were in uproar earlier
this year when Mondelez International, makers of
Toblerone, changed its shape. Budget high street
retailer Poundland, spotting an opportunity, quickly
launched its own version of the popular chocolate
bar, calling it Twin Peaks. Equally quickly, Poundland
found itself on the wrong end of a legal claim.
There is a valuable lesson that businesses should
learn when changing products, says Emma Stevens.
Mondelez International, the makers
of the Toblerone chocolate bars,
in November 2016 changed the
much-loved shape of its product
from a row of 11 triangular chunks
with distinctive peaks to a row
of nine triangular chunks spaced
further apart. The decision not only
left chocolate lovers angry, it also
left with them with a smaller bar of
chocolate.
Adding further to Mondelez’s
misery, Poundland introduced its own
version of the chocolate bar, called
Twin Peaks, reportedly catering to
a gap in the market created by the
change of the Toblerone. Poundland’s
bar features two rows of two joined-up
peaks instead of one; its packaging
is in red and gold and features two
mountains, reportedly based on the
peaks of the Wrekin Hill in Shropshire.
The Twin Peaks bar was due to be
launched in July, but was delayed
when Mondelez brought a legal
action to protect its intellectual
property in the Toblerone bar.
Mondelez first registered the
distinctive Toblerone shape, with 12
chunks rather than the 11 chunks
sold in the UK since about 2010, as an
EU-trade mark in 1997; the registration
of the shape mark granted Mondelez
the right to take legal action against
anyone who tried to copy the shape
of its Toblerone bar.
It has since been reported that
Mondelez has now issued a claim in
the High Court against Poundland for
damages on the basis of trade mark
infringement of its registered shape
and image marks. Mondelez argues
that the Twin Peaks bar is “deceptively
and confusingly similar” to Toblerone,
in particular on the basis of its shape,
packaging and logo. Poundland has
defended the claim, saying that its
chocolate bar is new and distinctive
from the Toblerone shape.
Interestingly, there may also be
arguments that Mondelez has weakened
its registered mark by changing the
shape of the Toblerone bar.
This is not the first time in recent
years that big brands have made the
headlines in relation to the shapes
of their products, with Nestlé’s
dispute with Cadbury regarding
Nestlé’s attempted registration of
the shape of its KitKat bar. In that
case, the attempted registration
was unsuccessful as the Court of
Appeal found that the shape was not
distinctive enough to be registered
as a trade mark.
What can businesses learn
from Toblerone?
Whilst shape marks have made
the headlines, the range of marks
which can be registered to protect
intellectual property is much wider
including words or phrases (word
marks) and logos (image marks).
With online and real-world
infringement becoming increasingly
common, owners of intellectual
property must take steps to register
and to protect their brands.
Whilst it is possible to take action
against copycat brands if words
and logos are not registered, this
is usually more difficult than if
registrations are in place. The courts
will require a number of elements
to be established which are often
difficult to demonstrate, including
goodwill in the unregistered mark and
a likelihood of confusion between the
unregistered mark and the infringing
one.
When establishing a new product
or brand it is sensible to complete
thorough searches at the outset to
ensure that your intended mark has
not been registered previously and
is not too similar to existing marks;
failure to do this can lead to expensive
litigation in the event that the mark
inadvertently infringes an existing
mark and the previously registered
owner takes action to protect it.
Similarly, ensuring marks are
properly registered at an early stage
can assist in protecting your brand;
where infringement does occur, it is
important to consider taking action
swiftly to ensure that your brand and
intellectual property are not damaged
or devalued.
The same applies following a
rebrand or redesign, as Toblerone no
doubt now recognises.
Contact us direct
Emma Stevens
Associate Solicitor –
Dispute Resolution
023 8057 4303
emmastevens@coffinmew.co.uk
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