From elaborate egg-shaped creations to adorable bunny-shaped treats, many of us will have been treating ourselves to some chocolate goodies this past Easter weekend. However, behind the scenes, Easter treats are often at the centre of legal disputes over trademark, design, and patent rights.
As confectionary companies compete to capture our attention at Easter, they should also be aiming to protect their creative ideas from being copied. Let’s dig into the world of chocolate wars and the intellectual property rights that come into play.
A Taste of Rivalry
In recent years, there have been several high-profile intellectual property disputes involving chocolate brands. One of the most famous cases involves Cadbury’s purple packaging.
Cadbury's attempt to expand an existing trade mark in respect of its iconic purple packaging was successfully challenged by rival chocolatiers, Nestlé. In 1995, Cadbury had previously registered a trade mark for its "predominant" use of the colour on its chocolate bars. When Cadbury attempted to expand this trade mark to apply to other products in 2004, Nestlé objected on the basis that allowing Cadbury to expand the trade mark would threaten its products (such as Quality Street).
After a lengthy dispute, in 2018 the Court of Appeal ruled that the expansion of the trade mark would be too broad. The Judge stated that the description of the trade mark "falls foul of the requirements of clarity and precision".
Read more about the dispute and the Court of Appeal judgment in our blog here.
In 2015, Nestle also took action against an Italian confectionary company , regarding protection of its "Galak" branded line of white chocolate products before the IP court of Milan. Nestle held several trade marks concerning the word "Galak", used in connection with its assortment of white chocolate products, including Easter eggs. In 2012, the Italian company launched its own range of white chocolate Easter eggs under the brand name "CIOCOLAK". Nestle claimed that this conduct amounted to trade mark infringement and moved for a permanent injunction. The Milan IP court, however, rejected all of Nestle trade mark infringement claims, noting that the signs "GALAK" and "CIOCOLAK" are conceptually different.
These legal battles aren’t just about protecting profits; they’re also about preserving brand identity and preventing competitors from confusing customers. Accordingly, IP rights are a crucial tool in a business's brand enforcement strategy.
We'll now take a look at the different types of intellectual property rights which can be relied upon by confectionary companies to protect their Easter goodies.
Don't put all your eggs in one basket —various types of IP protection!
1. Trade marks: Protecting brand identity
Trade marks are crucial for protecting branding elements like logos, slogans and product names.. In the case of chocolate brands, this can include everything from logos and product names to distinctive packaging and even colours (like Cadbury’s use of the colour purple).
Trade marks help safeguard a brand's reputation by ensuring that no one else can use the same or confusingly similar marks in a way that could lead to customer confusion. For businesses, trade marks are a key way to protect brand identity and stand out in a crowded Easter market. Trade mark registrations are valid for 10 years before they require to be renewed.
2. Design Rights: Protecting unique product designs
When it comes to the look and shape of chocolate products, companies can often rely on design rights. Design rights can protect the aesthetic features of a product, like the shape of a chocolate bunny or the design of an Easter egg.. In the UK, unregistered design rights arise automatically and last for up to 15 years (or 10 years from first sale). However, registering a design with the UK Intellectual Property Office (UKIPO) grants stronger protection, initially for five years, with the possibility of renewal for up to 25 years (these rights may be registered designs, but the option to register design rights can vary depending on jurisdiction).
Many consumers will resonate with the unique design of a product and therefore, preventing that design from being used by competitors can be a valuable tool to businesses.
3. Copyright: Protecting artistic works
Copyright can come into play when original literary or artistic works are created. For example, unique packaging artwork, advertisements and promotional materials for a brand's Easter collection can be protected under copyright law.
Copyright protection takes effect as soon as the artistic work in question is created, with no requirement for registration in the UK. It gives the creator the exclusive rights to reproduce, distribute and display their works and accordingly retain creative control and profit from their works. In the UK, copyright generally lasts for the creator’s lifetime plus 70 years.
4. Trade Secrets: Protecting recipes and processes
Lastly, a chocolate company’s may rely upon a trade secret — this is a type of IP right which protects confidential information, such as a company's recipes and manufacturing processes. To qualify as a trade secret, the information must be commercially valuable, known only to a limited number of people, and subject to reasonable steps to keep it secret (such as confidentially agreements). In the chocolate world, the closely-guarded formula for Hershey’s chocolate is a trade secret.
Don’t let anyone scramble your ideas this Easter!
Easter may be one of the most lucrative periods of the year for chocolate brands (with supermarkets full of Easter goodies from Boxing Day onwards!), and so it is imperative that they have their IP protection in order.
As a consumer, you may never see the legal battles behind the scenes, but as we indulge in the remainder of our chocolate treats this Easter, let’s also appreciate the IP rights that aim to keep these products safe from copycats — and sweeten the deal for all of us!
If you would like to speak to one of our experts about your IP rights or brand protection strategy, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies, or for more information check out our IP handy guide.
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