Confectionary trade mark disputes

28th September 2021

With a grizzly start to last year a group of friends in Spain, trading as Osito & Co, found themselves in a rather sticky situation…

Ander, Tamar and Julen, who met whilst at university, came up with a sweet idea, whilst on holiday, of infusing jelly gums with alcohol. Their vision was to capture an audience of likeminded, over 18 year olds, with their gluten free bear shaped treats. The bears, infused with 15% alcohol were to be sold at pubs and clubs and also available to purchase from their website. Flavours include gin and strawberry, vodka and orange, tequila and lemon, rum and pineapple and whisky and cola.

However, German confectionary giant, Haribo, got wind of the product and issued a six page cease and desist letter to the young start-up company owners.

Osito & Co were requested to stop producing the gums, destroy any marketing materials and transfer ownership of their domain name, to Haribo.

Alarmed by the threat, Osito & Co, who say they are a small business and do not have funds to fight the action, continue to sell their alcoholic bears on their website and state that by purchasing them you will be upsetting Haribo.

Haribo have not been shy to take legal action in the past against purported infringers, including claims against Lindt in 2015 whereby Haribo claimed Lindt’s foil coated chocolate bear resembled that of their own “Gold Bear” logo. Initially the Courts found in favour of Haribo, however, after filing an appeal, the German Federal Court of Justice ruled that Lindt’s bear was not violating Haribo’s trade mark or imitating the fruit gum sweets.

Other confectionary delights have also come across issues when it comes to their intellectual property rights.

Mondelez International Inc, had a legal battle with Poundland Limited in relation to the Toblerone and Poundland’s Twin Peaks chocolate bar, which similarly featured a triangular cross-section. The launch of Poundland’s bar was postponed in early 2017 but a three-month legal battle was settled allowing the new bar to go on sale.

The Twin Peaks bar boasted one-fifth more chocolate as there were two pyramids in each segment, compared to the Swiss Alps inspired Toblerone. In 2018 the bar was relaunched with a modified shape, which represents the different heights of Shropshire’s Wrekin and Ercall hills.

Another confectionery giant, Cadbury, hit problems with a new trade mark application for the colour purple (Pantone 2685C).

Cadbury first filed a trade mark application for the colour purple in 1995.  However, this was limited to “chocolate in bar or tablet form”. In 2004 Cadbury applied for a new trade mark application to broaden the protection of the earlier registration. This was opposed by Nestlé, claiming the shade had no distinctive character and was too broad for a range of goods.  The description applied for read “The mark consists of the colour purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packing for the goods”.

A decision by the UK Court of Appeal in 2013 ruled that the term ‘predominant’ was too broad.

This then alerted Cadbury to the realisation that their earlier mark stands on unsteady ground as the same description had been used for this registration.  Cadbury went back to the UK Court of Appeal and attempted to amend their original registration, claiming that their original mark was for a series of two different marks being:

1) the colour purple applied to the whole visible surface of the packaging of the goods and,

2) the colour purple being the predominant colour applied to the whole visible surface of the packing of the goods.

The Court of Appeal denied Cadbury the right to change the description of its earlier mark and refused to accept that Cadbury’s registration is for a series of two different marks. Not such a sweet end to the story for Cadbury this time.

For more food related trade mark disputes, listen to Blake Morgan’s Ben Evans talking about the ongoing Aldi vs M&S caterpillar cake case on the Sky podcast here.