Toblerone: the importance of trade mark registrations

Poundland has been forced to redesign its new chocolate bar after legal action was taken against them by the makers of Toblerone for infringing their trade mark registrations. Serjeants’ Tim Cadman comments on the case.Toblerone - trade mark registrations

The Toblerone brand has been in the spotlight again following a trade mark dispute between its owner, Mondelez International, and Poundland after Poundland announced in June that they were to start selling a new chocolate bar with surprising similarities to the Toblerone.

The new chocolate bar is called “Twin Peaks” and was generally considered to look fairly similar to the Toblerone, with the exception that the “peaks” in the bar were formed of twin peaks, rather than single peaks. The Twin Peaks bar was even going to be sold in gold and red packaging bearing more than a slight similarity to Toblerone’s distinctive packaging. Poundland stated that they were launching the product due to an unfavourable reaction to the shrinking of the size of the £1 Toblerone bar from 180g to 150g without decreasing its physical size, which had been achieved by making the gaps between the peaks of the bar wider.

Legal action to prevent new product launch

Unsurprisingly Mondelez International were not particularly happy with this development and took legal action to prevent the launch of the new bar. Mondelez have trade mark registrations in the UK that cover both the packaging of the Toblerone and the shape of the chocolate bar itself and it is believed that they relied on these registrations, amongst other rights, to prevent the launch of the Twin Peaks bar.

Poundland had argued that Mondelez’s decision to change the shape of their £1 Toblerone bar affected the validity of the shape registration. It is difficult to understand this argument. The original shape of the Toblerone remained in use in other (more expensive) Toblerone bars so there was no issue that Mondelez were no longer using the relevant shape. Further, the shape of the Toblerone is distinctive with no other manufacturer making confectionary bars with a similar shape.

Poundland and Mondelez reach settlement

A settlement has been reached between Poundland and Mondelez. Poundland will be allowed to sell a limited run of Twin Peaks bars in December, albeit in redesigned packaging. After this limited run, the Twin Peaks bar will then be re-launched in the New Year with a modified shape, presumably further removed from the distinctive Toblerone shape.

We do not know what arguments each side put forward during the settlement negotiations. however, the fact that Poundland are being made to redesign both the packaging and the shape of the Twin Peaks bar is a clear win for Mondelez and suggests the value of their trade mark registrations. Without these registrations Mondelez would have found it much more difficult to prevent Poundland’s launch of their “lookalike” product.

Unconventional trade mark registrations

Perhaps most interestingly, Mondelez’s trade mark registrations in this case were unconventional registrations of the packaging and the shape of the bar itself. They could not rely on their registrations for the Toblerone name as Poundland had given their bar a very different name. If Mondelez had simply relied on conventional trade mark registrations of the name ‘Toblerone’ it is much less certain that they could have forced Poundland to redesign their bar.

Our advice

This high-profile case highlights the value of obtaining multiple trade mark registrations – particularly for manufacturers – in order to protect your products from infringement. You should always seek professional IP advice to ensure you are fully protected as simply trade-marking a product name may not always suffice.

The case is also a word of caution to any retailers who sell look-alike products.

To check whether your trade mark registrations are sufficient to prevent infringement, contact our trade mark specialists here or call 0116 233 2626.
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