Intellectual Property

Chocolate and trademarks: a battle royal

By Taras Kulish

When I lived for three years on the shores of Lake Geneva, Switzerland with my family from 2011 to 2014, our favourite pastime was visiting the Cailler chocolate factory with out-of-town guests. My love of Swiss chocolate, coupled with my fascination for intellectual property law, has inspired me to take a closer look at trademark disputes involving chocolate.

Chocolate wars have been waged all over the world on many fronts — product names, shapes of chocolates and boxes, packaging colours and even the taglines used in association with the delectable product.

Lindt’s chocolate bunny — created in 1952 — has had bitter battles all over the European Union, with mixed results. The Zurich giant wrestled German chocolate maker Confiserie Riegelein for 12 years in a bid to prevent Riegelein from producing chocolate bunnies. The technical issue was a 3D trademark shaped like a bunny. German judges viewed the Lindt bunny as “traditional” and not sufficiently distinctive to be registered as a trademark. Riegelein had been producing a sitting gold-wrapped bunny for more than 50 years. Perhaps Lindt should have intervened against this German competitor earlier. By waiting, it allowed Riegelein to create goodwill in association with its bunnies.

In Austria, the Lindt bunny scored a knockout victory over Hauswirth, which could no longer produce Easter bunnies that resemble those of their Swiss rivals. However, the Court of Justice of the European Union (CJEU), decided against Lindt and held the shape of a sitting bunny is typical for chocolate products, especially at Easter.

Sometimes chocolate makers have to watch out for candy producers as well. In a famous case of competing sweets, Haribo sued Lindt, claiming its golden chocolate bear was too similar to Haribo's popular Gummy Bear. German judges agreed and ruled against Lindt.

Guylian of Belgium makes a chocolate seahorse, which it thought was a good 3D trademark. In 2002, Australia disagreed. Guylian’s seahorse shape, in association with chocolates, was found not distinctive or original and, as a result, the court would not grant a monopoly on the seahorse shape.

But seahorses, bunnies and bears have nothing on Nestlé, another Swiss favourite, which has tried over the years, with mixed success, to register the Kit Kat bar's four-finger shape.

Nestlé succeeded in South Africa, but lost in Singapore. Though Nestle recently celebrated Kit Kat's 80th birthday, the global giant only first attempted to protect its design in Europe in 2010. Nestlé claimed Kit Kat's shape and “snap” function had become distinctive. If Toblerone could successfully trademark its “zigzag prism” Matterhorn-like shape, why couldn’t Nestlé monopolize the four-fingered rectangular bar? The CJEU felt the rectangular bar is not as distinctive as the Matterhorn clone and found the four-fingered configuration simply gave the candy bar a technical result. The lesson learned here is register early (when you first come out with the product) and register often.

Even though 3D trademarks are notoriously difficult to register, a French company, Sarment du Medoc, was able to trademark the shape of its chocolate twigs. There was nothing comparable, so the requirement for distinctiveness of a trademark was satisfied.

The realm of colour is also a prime battlefield in the chocolate wars.

Purple: Nestlé and Cadbury fought over the colour purple. Swiss-based Nestlé came out on top against Cadbury’s attempt to gain a colour monopoly. In October 2014, three judges ruled Cadbury’s distinctive purple packaging could not be registered as a trademark because it lacked “specificity.” The British Law Lords said it would be unfair to give the U.K.-based conglomerate exclusive rights to the colour in relation to chocolate bars. Even though Cadbury used purple for 100 years, as a tribute to Queen Victoria, a colour monopoly would give “a competitive advantage to Cadbury” and put “Nestlé and its other competitors at a disadvantage.”

Orange: Hershey and Mars squared off about Reese’s distinct shade of orange, which is trademarked. Mars used a similar colour with its Dove peanut- and chocolate-flavoured bars. Hershey sued Mars, while Mars counterclaimed, seeking a declaration that its packaging did not infringe the Reese mark. The courts did not determine the point as the parties reached a settlement. However, Mars changed the packaging of the Dove bar but still used some orange — it's just not the prominent colour. By getting along and settling, a ton was saved in lawyers’ fees.

Lastly, there’s the war of words. Delfi, another Swiss company, scored a victory in Australia against Mars. Delfi was entering into Australia, a market that Mars “owned" through its Maltesers brand. Delfi conceded that Maltesers had acquired a reputation in Australia before its Maltitos came on the scene. The court decided the use of Maltitos would probably not deceive or cause confusion in the market because Maltesers “is strongly embedded in the consciousness of many of those of average intelligence,” and has “a very widespread, solid reputation in the area of packaged confectionery.” The strength of that reputation meant that Maltitos would be less likely to deceive or confuse consumers.

Skirmishes involving chocolate trademarks stir our passions because these marks are tied to fond memories of our youth. Chocolates also have brand loyalty, which can captivate our senses. I will never tire of trademarks and chocolates, just as one can never really grow tired of touring a Swiss chocolate factory.

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