Toblerone's new shape raises trade mark questions
Toblerone's recent announcement of a decision to change the weight of its products in the UK, as reported in the media, introducing wider gaps between the bar's triangles, raises questions regarding trade mark protection of the bar itself.
A new IP strategy?
As quoted in the World IP Review (WIPR) article "Toblerone may need new IP strategy after weight loss", 09 November 2016, Jeremy Pennant comments:
Leaving aside whether consumers feel duped and looking purely at the trade mark aspects of the change there are acouple of issues.
First, it should be remembered that there is no change insofar as the use and protection the brand owner has for the TOBLERONE name and the highly distinctive packaging. These aren't changing.
What is more interesting is what happens to the trade mark protection for the chocolate bar itself. Will use of the new shape with the gaps be sufficient to maintain a registration for the more mountainous version? The test has two parts – (i) what are the differences; and (ii) do they alter the distinctive character?
In my view, whilst consumers will obviously notice the difference, they will simply see this as a close variant of the product with which they are familiar, and thus use will probably be sufficient to maintain the existing registrations. I would, however, expect the brand owner to also look to protect their new shape, if they have not already done so.
A side question that may give the brand owner some concern is the struggle, thus far unsuccessfully, the owner of KitKat is going through to secure protection for the shape of its product.
Case details for Toblerone's 3D mark
Trade mark: WO0000000727788
Trade mark type: three dimensional mark
International registration date: 07 February 2000
Date of protection of the International Registration in UK: 25 July 2002
List of goods: Class 30 - Cocoa, chocolate, cocoa and chocolate goods, bakery, pastry and confectionery products, sweetmeats, edible ice.
Holder: Mondelez Europe GmbH, Switzerland