If rumours are to be believed, Poundland has got itself into a dispute with the makers of Toblerone, Mondelez.
Poundland had planned to launch their own take on the Toblerone chocolate bar in early July but this has now reportedly been delayed. Instead of each segment having a distinctive single peak, the Poundland version has a twin peak on each chunk of chocolate.
Toblerone is one of the limited number of shapes which is protected by a 3D trade mark, offering potentially indefinite protection for the distinctive shape of the Toblerone bar.
This particular dispute is all the more relevant because the shape of some Toblerone bars has recently changed in the UK. The triangular chunks of chocolate have infamously been spaced further apart so as to reduce the overall amount of chocolate in a bar. This has caused a growing stream of comment from angry Toblerone consumers and legal commentators too. Poundland appears to be trying to limit the disappointment of shoppers by introducing their version of the Toblerone.
The 3D trade mark which Mondelez has for Toblerone relates to its original shape, not the shape of the bars where the triangles are more spread out. Some legal commentators have suggested that the change could eventually lead to claims that Toblerone’s 3D trade mark is invalid for non-use. However Mondelez have reminded everyone that some of their bars remain in the original shape, hence the original shape is still in use. Importantly. Mondelez also have a 3D trade mark for Toblerone’s packaging. So that may well be used as a weapon against Poundland depending on how similar their packaging is.
Many rights owners in the UK complain that it is too easy for competitors to get away with copycat products. Famously supermarkets sell hundreds of own brand, look-alike products and avoid sanction.
The first port of call for brand owners is usually to try and rely upon their trade marks, which they will commonly have in place to protect product names and logos. The advantage of relying upon a trade mark is that it is possible to assert that a copycat product takes unfair advantage or causes detriment to the distinctive character of the trade mark. In doing this, the brand owner only has to show that the consumer will establish a link between the copycat product and the original.
However copycats are well versed in making their products sufficiently distinct as to avoid the use of any similar product name, logo or packaging. This usually defeats any assertion of trade mark infringement. However where a 3D trade mark exists, as with Toblerone, the fact that the copycat name (Twin Peaks) and any logo is nothing like the name Toberlone will not matter because Mondelez can rely upon the 3D trade marks in their argument that consumers will establish a link between the Twin Peaks bar and Toblerone. In other words, it will be easy for them to argue that buyers will know very well, when buying a Twin Peaks bar, that it is Poundland’s version of a Toblerone bar.
Where a brand owner needs to stop a copycat product and a claim for trade mark infringement is not likely to succeed, their next port of call is usually to claim passing off. This is a cause of action used most frequently used where no registered rights are available to rely upon. To succeed in a passing off claim it is necessary to demonstrate that there is confusion amongst consumers as to whether a copycat product is made by the same people that produce the original product. So with Twin Peaks, Mondelez would need to show that consumers are confused as to whether or not this new bar is made or endorsed by Mondelez. This is a much higher hurdle to clear, particularly given that the product names are so different.
Mondelez appears to be in a strong position in the current claim. The fact that they have two relevant 3D trade marks puts them at an enormous advantage.
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