Toblerone has tempered Poundland’s launch of its rival “Twin Peaks” chocolate bar by threatening infringement action.
Twin Peaks
Toblerone’s customers on this side of the Channel were outraged when Toblerone reduced the size of its bar by widening the spaces between its famous peaked chunks. Chocolatiers take note: the British public does not react well to changes to its favourite treats.
Poundland seized on the resulting gap in the market to produce its own “Twin Peaks” bar, boasting double peaked chunks, containing 30g more chocolatey goodness than its Swiss rival and British made. Pre-launch images of Twin Peaks present it in gold packaging with red lettering bearing an outline of the Wrekin hill (whose double peaks are said to be the inspiration behind the bar’s shape), evoking Toblerone’s colour scheme and the majestic Matterhorn which graces Toblerone’s packaging.
What can brand owners do?
So-called ‘copycat’ products, which push the boundaries between capturing a sense of a leading brand whilst maintaining a separate identity and infringement of the brand owner’s rights, are a common sight on our retailers’ shelves. Poundland would, no doubt, say that its Twin Peaks bar falls on the rights side of that line. So how does a brand owner ensure it is able to stop copycats in their tracks?
Registrations strategy
It is important for IP-rich businesses to implement a registrations strategy for its portfolio of marks and to keep that strategy under review as its business grows. Toblerone’s owners have a wide portfolio of word, device and shape trade marks covering the Toblerone name and get-up.
Monitor competitors’ offerings
Brand owners must ensure they monitor their market and are familiar with their competitors’ offerings. There is clear advantage to giving your business the option of taking early preventative action to protect your brand’s interests before any material harm is done. Toblerone could hardly have missed Poundland’s plans for its rival product, revealed during a fly-on-the-wall television documentary on the discount retailer and widely publicised by the press; news that threats of legal action by Toblerone may have delayed the launch of Twin Peaks followed shortly afterwards.
Action
Where legal action appears necessary, early risk assessment is valuable to determine the right strategy which accords with your business’s commercial objectives.
Sometimes, a short, sharp cease and desist letter may be all that is required. Where there is more at stake, or the lines between legitimate competition and infringement are blurred, you may need to be ready to commit resources to contested court proceedings or be prepared to negotiate.
Registered trade marks may be infringed, in brief summary:
where an identical mark is used in the course of trade in relation to identical goods or services to those for which the mark is registered
where the marks, goods or services are only similar it is necessary to demonstrate there is a likelihood of confusion on the part of the public
a well-known mark with a reputation may benefit from wider protection if use of an identical or similar mark would take unfair advantage of or be detrimental to its distinctive character or repute.
Where a mark is not registered, the goodwill in it can still be protected by an action for “passing off” which requires, very briefly, the mark owner to establish goodwill in the mark, misrepresentation by the alleged infringer and damage to the mark owner.
What does the future hold for Twin Peaks?
Toblerone’s threats will, no doubt, have relied on a combination of these claims. Toblerone’s greatest challenge probably lies in establishing that Twin Peaks will cause actual confusion or deceive consumers as to its trade origin; a cause which is unlikely to be aided by the widespread publicity surrounding Twin Peaks’ launch and a savvy public increasingly accustomed to discount retailers producing their own variants of leading brand products.
Whether the product is launched, and whether it maintains the same look and feel when it is, remains to be seen. It may yet prove to be a canny trip around the Wrekin to attract the glare of greater publicity before the launch of a toned-down product. Certainly, the tone of the press coverage, much of which paints the alleged copycat as a plucky British innovator up against the might of a continental rival, will have done an ailing Poundland no harm.
Read more on the confectionary conflict between chocolate giants Nestlé and Cadbury here and on shape trade marks here.
