Chocolate Trade Marks

As Easter has just been, you might be surprised to hear that anyone is still thinking of chocolate, let alone in the context of Intellectual Property.  But aside from making excellent chocolates, chocolatiers such as Lindt, Guylian, and Cadbury have secured extensive IP rights associated with their brands. 

Branding is an essential aspect of any business, especially for companies seeking to stand out in a populated market. The IP associated with a brand can refer to trade names, logos, trade dress, trade marks, and design rights. Protecting your brand from its inception is a useful way to ensure you retain market share for the products or services you offer. 

An example of a well-protected and established brand is the Lindt gold bunny. Lindt holds Australian trade marks for the shape and colour of their iconic chocolate bunny with gold packaging and a red ribbon as shown by the image below.  Lindt also holds this trade mark in various jurisdictions overseas. 

Image: Lidl (Left), Lindt (Right)

Lindt have been successful in preventing overseas infringement of their gold bunny by supermarket Lidl. In asserting Lidl’s infringement, Lindt provided surveys showing that the gold bunny is well known to consumers as a product of Lindt. At hearing, it was held that while there are differences between the bunnies, consumers were likely to be confused by the two gold bunnies. Consequently, Lidl was required to destroy their packaging.

Did you know? 

Kings can help you by offering trade mark registration services and protect your IP in other ways such as through design registration. 

It is not always smooth sailing protecting your brand. In 2007, Guylian was unsuccessful in registering their seahorse chocolate shape in Australia. 

Image: Guylian chocolates

During examination, several websites offering seahorse and marine shaped chocolates were cited including Darrell Lea. Resultingly, it was found that the shape was not capable of distinguishing the Guylian brand because other traders were already using the shape or similar shapes. 

Guylian appealed this decision and asserted that their chocolate seahorses had acquired distinctiveness over time. In this regard, Guylian presented evidence showing that the Guylian brand had a strong market presence with significant sales and advertising in relation to their chocolate seahorses. However, it was held that the seahorse shape itself is not capable of doing the work of distinguishing the goods from the goods of other traders. This decision reflects the need for a trade mark to be used “as a trade mark.” 

Did You Know?

Kings can help provide persuasive evidence to the trade marks office in support of prior use and/or acquired distinctiveness of your trade mark. We can also ensure that any evidence provided remains confidential. 

Turning now to Cadbury, many people would be aware that Cadbury have a trade mark for their purple packaging in relation to chocolates. 

It is relevant to note that a colour trade mark doesn’t give the user of the mark the rights to “own” the colour and all shades of that colour. For example, Cadbury’s purple trade mark in relation to chocolates will not prevent anyone from wearing a purple-coloured t shirt, or using a house paint the same colour. Rather, the trade mark relates to a specific pantone colour (or deceptively similar variant) and a specific group (or class) of products i.e., chocolates. 

Cadbury was, however, unsuccessful against Darrell Lea regarding their use of purple packing. In this case, it was found that the usage by Darrell Lea would not lead to consumers being mislead or deceived that the chocolates were associated with Cadbury. In arriving at this decision, the shade variation, and Cadburys inconsistent enforcement of their reputation in the colour purple were considered, as well as the way Darrell Lea chocolates are sold i.e., often through stand-alone Darrell Lea stores and not beside Cadbury products.