There is no sugarcoating this alleged trade mark infringement

Posted on: July 23rd, 2018

Waitrose has recently backed down from a very public copycat dispute with Hotel Chocolat, concerning the alleged trade mark infringement of the chocolatier’s signature ‘slab’ design.

Angus Thirlwell, co-founder of Hotel Chocolat, took to Twitter to condemn Waitrose for producing chocolate bars with an almost identical design to his flagship product. Dubbing the situation ‘slabgate’, Thirlwell capitalised on the PR by initiating a chocolate amnesty where anyone who had bought Waitrose’s £2 ‘copy’ could trade it in for the ‘real’ £3.95 Hotel Chocolat edition for free.

Ultimately, Waitrose agreed to discontinue the product in a bid not to enter into a ‘protracted legal dispute’. In this instance, Hotel Chocolat holds EU registered design rights in relation to the shape and appearance of their ‘slabs’. Waitrose’s response is likely testament to the power of such rights in deterring infringement from competitors and an important reminder to brand owners of the value of protecting their designs. This is particularly notable considering that Hotel Chocolat supply to Waitrose, so arguably had the most to lose from pursuing the complaint.

Reporters have flagged the case as a lesson to businesses about the pros and cons of tackling a trademark infringement in the media. Waitrose and Hotel Chocolat are fairly evenly matched in terms of brand recognition and size; PR and brand damage concerns would certainly have been a key factor in Waitrose’s hasty retreat. However, rights owners should be cautious before launching an online attack; not all companies are guaranteed to respond in a similar vein. A public vitriol is just as likely to attract negative press, and if not very carefully executed, could potentially expose a company to libel claims.

Despite the force of their design rights, Hotel Chocolat has been lucky to resolve this issue without litigation and even luckier to garner some welcome press in the interim. A similar altercation between different companies may not have ended the same way.

Emma Stevens in an Associate Solicitor in the Dispute Resolution team.