Cadbury is once again embroiled in a legal dispute, this time over its Toblerone chocolate bar, currently protected as a 3D trade mark.
The Dispute
This time Cadbury’s dispute is with UK retailer Poundland, who announced in June this year that it was releasing its own mountain inspired chocolate called ‘Twin Peaks.’ The release of the Twin Peaks product was delayed following threat of proceedings by Cadbury, who argue that the Twin Peaks chocolate bar and its packaging infringe its registered trade mark.
Poundland is set to go against Cadbury and argue that the Toblerone 3D trade mark has been abandoned since its redesign which was released in the UK in November last year: the redesigned Toblerone has bigger gaps appearing in between the triangular shaped mountains, the change in the shape arising as a consequence of an increase in the price of ingredients and Cadbury wanting to keep the length of the Toblerone unchanged.
Given Cadbury’s successful opposition to Nestlé’s application for a 3D trade mark, premised on the lack of distinctive character of Nestlé’s mark, it is ironic that Poundland are employing an argument on distinctiveness to try and defeat Cadbury’s claim. In a twist on the arguments deployed in the Nestlé/Cadbury battle, Poundland argue that, in changing the dimensions of the Toblerone, the registered trade mark is no longer distinctive.
Case Law
We have seen earlier with the KitKat case that there are a number of challenges to overcome when demonstrating that an otherwise un-distinctive mark has acquired distinctive character. How the development in the case law on this issue (helped in part through the Nestlé/Cadbury litigation) plays out, only time will tell. The situation here is of course different as the mark is already registered. That said, the impact of Toblerone’s redesign and whether that diminished or otherwise weakened its 3D trade mark remains to be seen.