What can businesses learn from Toblerone?

Posted on: December 1st, 2017

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.

Emma Stevens is an Associate Solicitor in the Dispute Resolution team at Coffin Mew.