“For the past several months, lawyers in Britain have been wrestling with a difficult challenge that, at times, seemed unlikely to come to a resolution,” Vice’s Munchies publication wrote this week. “No, it has nothing to do with the ongoing Brexit negotiations, but instead involved a British discount chain fighting for the right to sell knockoff Toblerone candy bars in its stores.” The latest in a string of trademark fights over … candy, the fight between the Swiss division of Toblerone’s owner Mondelēz, the American food and drink giant, and rival Poundland, the British food chain that was also selling Toblerone bars in its stores, came as Poundland was preparing to launch a new candy bar. Its Twin Peaks looked, according to Mondelēz’s sizable legal team, a bit too much like the classic Toblerone design, which is known for its line of conjoined triangular prisms filled with what the company calls a “unique milk chocolate” including nougat, almonds and honey.
Allegedly inspired by The Wrekin and The Erkin – two English hills located near the company’s headquarters, hence, the Twin Peaks name, and prompted by Mondelēz’s move to enact a slight redesign of its Toblerone bar (increasing the space between the individual prisms that make up its candy bar), Poundland introduced a cheaper, triangular chocolate bar of its own. It was slated to become available in its chain of stores in July, that is, until Mondelēz made its concerns known by way of a strongly-worded cease and desist letter addressed to Poundland.
That threat of litigation from Mondelēz quickly escalated into a full-blown legal battle, with the Toblerone owner citing claims of trademark infringement, alleging that the Twin Peaks bar was “deceptively and confusingly similar” to its well-known Toblerone bar, and asked the court to order Poundland to refrain from selling the lookalike bar. Poundland responded with claims of its own, arguing primarily that the court should invalidate Toblerone’s 20-year old trademark registration because, in light of the Toblerone redesign, the shape of the chocolate bar was “no longer distinctive enough” to warrant a trademark registration.
Fighting Toblerone’s trademark infringement claim, which centers on the likelihood that consumers may be confused as to the source of the chocolate bars and think that the Twin Peaks bar is connected to and/or endorsed by Toblerone, Poundland alleged that the packaging, name, taste and shape of its Twin Peaks bar is different to the point that “no member of the relevant public would mistake one for the other.” It further claimed that the shape of the Twin Peaks candy bar “is new and creates a different overall impression upon the informed user.” Mondelēz’s legal team, hoping to maintain the company’s monopoly on the pointed candy bar, vehemently disagreed.
Potentially opting to focus on its simultaneously unfolding – but higher-stakes – fight for the ability to continue to make candy bars that allegedly looked a bit too much like Nestlé’s KitKat bar, Mondelēz opted to settle its case against Poundland that fall, just a few months after filing suit. As part of the parties’ agreement, Poundland could sell 500,000 Twin Peaks bars without fear of future litigation from Mondelēz … but, after that, it would have to change the design of the bar, and also redesign its packaging so that it would not be making use of the same red and gold packaging as Toblerone.
At least some have argued that this is not a total loss for Poundland, even in light of the legal fees it has racked up in the process. Tom Lingard, partner at UK-based law firm Stevens & Bolton, says, “It is worth considering the significant publicity this has generated for Poundland—which was quite possibly the point of the whole exercise.” As for Mondelēz, it is walking away with its Toblerone trademark registration intact, despite Poundland’s claims of invalidity, which is a significant win.
It seems the real loser in all of this is the legally-interested minds, who were curious to see how the court would rule on whether the Toblerone redesign would have an impact on the distinctiveness – and thus, the protectability – of the Toblerone design. This lawsuit was, after all, about more than just chocolate. It was about design.