This comes just days after the FMCG giant behind brands such as Toblerone and Cadbury opted to file a legal claim against another independent free-from chocolatier, Catherine’s Originals, over perceived similarities to Toblerone bars.
This latest development sees Kraft Foods, part of the Mondelēz Group, allege that Moo Free’s White Choccy Snowballs product infringes trade mark rights associated with Cadbury’s iconic Snow Balls.
According to the Devon-based free-from manufacturer, Kraft also alleges that Moo Free is “taking advantage” of the reputation associated with the Cadbury product and potentially “causing confusion” in the minds of shoppers.
In a statement on LinkedIn, a spokesperson for Moo Free said that the business “did not accept” that any infringement had been established and had “responded accordingly”.
Expressing solidarity with Catherine’s Originals, the spokesperson added that Kraft had requested that the product be removed from sale immediately, which the company said would cause “significant financial damage” to a family-run business of its size.
Legal experts back Cadbury’s position
While Moo Free has reacted with indignation at Mondelēz’s potential action, legal commentators have been less convinced about the independent firm’s chances of coming out unscathed.
Laurie Bray, senior associate trade mark attorney at intellectual property firm Withers & Rogers, believes that Cadbury owner Mondelez firmly has the upper hand when it comes to the law.
“Moo Free seem to be taking the position that ‘snowball’ is a generic term when it comes to confectionery, however the name has been registered as a trade mark by Cadbury since 2001. Unless Moo Free are able to cancel Cadbury’s registration, Cadbury appear to be in a strong position.
“It’s interesting that Moo Free have been selling their product for around two years before this trade mark dispute came to light, and that they claim never to have heard of the Cadbury product.”
She continued: “Mondelēz has said that it is open to amicable settlement. Given that the Moo Free product is marketed as a vegan product, and Cadbury Snow Balls are not, the distinction between the two products may be the starting point for a commercial agreement between the companies.”
Pointing out the sticky territory that brands may enter when picking commonly used festive product names, Daniel Kelly, legal director in the intellectual property team at Shakespeare Martineau, added: “A festive product name can quickly turn into a commercial headache, and this dispute highlights exactly how even seemingly familiar or descriptive-sounding names can carry significant intellectual property risks. Cadbury has held a UK trade mark registration for ‘Snowball’ in relation to chocolate and chocolate confectionery since 2001, and so it’s not surprising that the brand would feel entitled, and from a portfolio-management perspective expected, to protect their asset.
“Although this is another example of a smaller business receiving an enforcement letter from a much larger confectionery business, Cadbury’s public response does appear less aggressive than the demands in its reported correspondence. Emphasising that proceedings have not been issued and that an amicable resolution remains possible may help to manage potential reputational fallout.”
A reminder on trade mark due diligence
Reiterating the importance of meticulous trade mark research, Kelly emphasised: “This case serves as a timely reminder for businesses to conduct clearance searches before launching a new brand or product name. This allows potentially conflicting third-party rights to be identified before significant investment is made in packaging, production, marketing and retailer listings. A playful festive name may seem harmless, but that doesn’t mean it is free to use, especially in crowded markets such as food and confectionery.”
It is important to note that at this stage there has been no confirmed legal action taken by Mondelēz, unlike in the Catherine’s Originals case, and that, as Bray and Kelly point out, the Cadbury owner remains, for now, open to an “amicable settlement”.
Trade marks do, of course, remain hugely important for large manufacturers, which have been able to build successful brands and products over many years in the market.
Cadbury Snow Balls, for example, have been sold in the UK since 1966 and have become a popular festive sweet treat in the intervening decades.
It isn’t difficult to see why Mondelēz would be willing to risk a degree of negative PR in order to stop what it might perceive to be a dilution of its product’s image.
These developments follow a similar dispute several 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.
