An independent chocolate maker in West Sussex is facing a legal claim from Kraft Foods Schweiz Holding GmbH, part of the Mondelēz group, over the shape of one of its products – the O’bar.
The Catherine’s Originals’ O’bar features a slender rectangle of chocolate with 10 protruding rounded blocks of chocolate.
According to the Guardian, Mondelēz has filed papers at the high court in London accusing Catherine’s Originals of trademark infringement.
The small vegan chocolatier, which was launched in 2021 by Catherine Dodd and her partner Jamie Miller, has defended its position.
Writing on her website, Dodd said: “We strongly disagree with Kraft’s claim against us” and the business is now working with a legal team.
Dodd described the legal action as “frightening” on her blog and alleges that the shape of the O’bar is a nod to the ‘O’ in ‘Originals’.
Toblerone was founded in Switzerland in 1908, with Kraft Foods snapping up the brand in 1990. That same decade, it successfully trademarked the shape of the chocolate bar in Europe. Mondelēz was formed following the division of Kraft Foods in 2012.
Commenting on the case, Mondelēz International told the Guardian: “We have a responsibility to protect our trademarks and intellectual property, which we take seriously.”
It added that it has attempted to resolve the matter “constructively and directly with Catherine’s Originals over several months but unfortunately have been unable to reach an agreement”.
Offering an external perspective, Michael Conway, partner in the intellectual property team at Birketts LLP, said the move was unsurprising.
“The Toblerone shape is one of the most famous and closely protected shape trade marks on the market, and brand owners are generally expected to enforce rights they consider may be at risk,” he said.
However, whether the claim ultimately succeeds is a different question.
“Shape trade marks are often interpreted relatively narrowly, and the court will need to assess the extent to which the products’ shapes are actually similar,” added Conway.
“However, where a mark enjoys the level of reputation associated with Toblerone, consumers do not necessarily need to be confused into believing the products come from the same source.
“If the shape used by another trader is found to be sufficiently similar to evoke the famous Toblerone mark and create a ‘link’ in the mind of the average consumer, that may be enough to support an infringement claim.”
Laurie Bray, senior associate trade mark attorney at European intellectual property firm, Withers & Rogers, added: “It’s quite rare for a brand owner to sue another over the shape of one of its products.
“Even with a trade mark registration in place protecting the shape of its Toblerone chocolate bar, it could be challenging for Mondelēz to prove that the bar made by Catherine’s Originals is sufficiently similar in shape that it would cause customer confusion.
“As a much smaller British manufacturer, a lengthy court battle may be a daunting prospect for Catherine’s Originals, and Mondelēz could well decide to take the matter to appeal if the High Court’s decision doesn’t go their way.”
This action follows a similar dispute some years ago between Poundland and Mondelēz over the bargain retailer’s Twin Peaks bar – a long chocolate bar with ‘M’-shaped humps. The move saw Poundland delay its launch and redesign the product.
As part of a legal settlement, Poundland was able to sell the 500K Twin Peaks bars already in production so long as they featured “distinctive packaging” that differed from Toblerone’s design.
The following year, Poundland relaunched Twin Peaks with a modified shape.
In a similar vein, in 2018 the global confectionery company, which also owns Milka and Oreo, fought Nestlé all the way to the Court of Justice of the European Union (CJEU) to prevent it from registering a trade mark for the four-fingered shape of its KitKat chocolate bar.
Ultimately, Mondelēz was successful in blocking Nestlé’s trade mark registration in Europe - but the case took more than a decade to conclude.
Commenting on whether brands should consider protecting the shape of their product, Bray added: “It can be very difficult to obtain commercial protection for the shape of a product, but it’s definitely worth considering.
“In the world of fast-moving consumer goods, and particularly with the rise of dupe culture, protecting the different aspects of a product’s distinctiveness is vital to defend the brand’s market position. When considering a shape mark, it is even more important to seek legal advice in order to get your application right from the start, and to ensure your path to registration is clear.”
