Legal battle shapes up as Toblerone issues claim in trade mark dispute

A new 'battle of the bars' is on the horizon as Toblerone owner Mondelēz issues a claim against Poundland in relation to its 'deceptive and confusingly similar' 'Twin Peaks' bar. 

Mondelēz alleges that the Poundland bar infringes its trade marks in relation to the overall shape, the shape of each chocolate chunk, the gold packaging and the product's logo. The Toblerone bar's 3D shape has been registered for 20 years, a success not achieved by Nestlé's (also owned by Mondelēz) KitKat.

In its defence Poundland (and second defendant, the supplier Walkers Chocolates) argues that the shape of the Twin Peaks bar, which they have attempted to protect by UK registered design, is new and creates a different overall impression on the informed user. 

It also claims that the Toblerone bar is no longer distinctive enough to own the trade mark rights, due to recent cost-saving changes in the bar's shape.  Controversially, Mondelēz shrunk the overall size of the bar and included fewer chunks in a version released last year. 

Poundland argues this decision was unfavourable with consumers and any good reputation attributed to the trade mark has been 'irretrievably abandoned'.  Poundland has not denied that the Twin Peaks bar was introduced to offer consumers an alternative to Toblerone 'with all the spaces in the right places'. 

This position echoes the Supreme Court's decision in Trunki, where although the competitor had admitted to copying the Trunki suitcase, this was irrelevant to whether it had infringed the design rights in doing so. 

This legal tussle revisits the issues raised by Nestlé and Cadbury over the KitKat as to whether a shape can be distinctive enough to function as a trademark, i.e. a badge of origin. 

It is arguable that the more a trade mark is used, the stronger the protection and the more able a business is to demonstrate infringement by competitors.  If competitors introduce identical shaped bars which become equally known to consumers, ultimately the 3D trade mark would lose distinctiveness.  It is therefore unsurprising that Mondelēz has taken legal action. 

Should the case continue to trial it will be interesting to see whether the decision taken by Mondelēz to re-brand Toblerone has impacted on the strength of the original trade mark, to its detriment. 

We will keep you updated.