'World Chocolate Day' was celebrated earlier this month. In the spirit of this delightful occasion, we take a look at the not-so-sweet side of the chocolate industry and consider the trade mark disputes that have shaped the market in recent years.
Chocolate colours: Cadbury v Nestlé
In a landmark Court of Appeal case, 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.
KitKat’s four fingers: Cadbury v Nestlé part 2
The shape of KitKat's four-fingered bar has also been the subject of dispute between these two chocolate giants. Nestlé sought to trade mark the shape of its products in various jurisdictions, facing opposition from Cadbury, which argued that the four-fingered shape was not distinctive enough to warrant IP protection. The European Court of Justice ultimately agreed with Cadbury and, in its ruling, emphasised the importance of distinctiveness in shape-related trade marks.
You can read more about that case in our blog here.
M&S v Aldi: A clash of caterpillar cakes
One of the most iconic trade mark disputes to date involved retailers Marks & Spencer (M&S) and Aldi.
In this 2021 dispute, M&S raised a legal action against Aldi, alleging that Aldi's release of "Cuthbert the Caterpillar" constituted trade mark infringement, arguing that Aldi's product closely mimicked the distinctive design of M&S's "Colin the Caterpillar" cake. M&S sought to prevent future sales of the lookalike cake and to prevent Aldi from producing similar products in the future.
The dispute centred on whether ''Cuthbert the Caterpillar'' caused confusion among consumers and unfairly capitalised on the reputation of M&S's products. It also raised issues of "passing off," due to similarities in each product's packaging and design.
Although the dispute was resolved out of court, it garnered significant media attention, illustrating the broader commercial and PR implications that can arise in such disputes.
We wrote about the famous caterpillar conflict in our blog here.
Food for thought
These cases highlight the importance of establishing a robust brand protection strategy that protects your intellectual property and avoids the likelihood of infringing a third party's intellectual property rights.
Claims brought for infringing a party's intellectual property can be costly and detrimental to the reputation of a business. It is therefore crucial that businesses obtain advice on their branding and trade marks in order to minimise the risk of a claim. One way to minimise the likelihood of a claim is to carry out a trade mark search and to obtain advice prior to using a trade mark, which will highlight if the use of the trade mark is likely to infringe on an existing registered trade mark.
Businesses should also remain alert to the branding and designs used by their competitors, to ensure that they are not infringing on your intellectual property, benefitting from your reputation and trade marks and causing confusion to consumers.
If you would like to speak to one of our experts about trade mark infringement, or IP protection in general, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.
