Spaced out?

How Toblerone's redesign could leave greater gaps in its maker's Trade Mark protection in the UK.

In October this year, Toblerone brand owner Mondelez announced that in order to control production costs, it would have to reduce the weight of some of its bars of chocolate, particularly in the UK (though the company was quick to deny that this was Brexit-related!).

This has now manifested itself in the new bars now lacking the pointed "peaks" of each of the distinctive chocolate triangles, and more noticeably in much greater gaps between the triangles, all leading to a lesser weight of chocolate in each Toblerone "prism."

It's not just chocoholics who've been sent into a bit of a spin by this development though. The intellectual property world has also taken quite an interest.

This is because Mondelez has a number of 3D Registered Trade Marks for the previous distinctive shape of its well known bar, including European Community Trade Marks designating the UK as a territory to which the Marks extend.

However, the essence of maintaining a Registered Trade Mark lies in the mark holder actually using the mark in the form registered for the relevant goods or services. Many commentators now feel that the Toblerone redesign has departed from the shape depicted by the 3D trade marks to such an extent that those marks are no longer being used on the bars in question. Equally, Mondelez has not (it appears) registered 3D Trade Mark protection for the new shape.

After a period of 5 years of non-use in a designated territory, a Registered Community Trade Mark becomes vulnerable to being cancelled (in the territory in question) by a revocation action. It is not yet clear whether or not Mondelez will roll out the new design across the entire range of its Toblerone bars, but if it does, and if it fails to secure new 3D marks, it could find that it loses the marks it had previously registered to protect the shape of its product, at least in the UK, with a resulting lacuna in its IP portfolio.

To my mind, this also had echoes of one aspect of the well-known Trade Mark / Passing-Off dispute between United Biscuits and Asda (the "Penguin v Puffin" case of 1997) in which United Biscuits / McVities were discovered to have registered a number of variants of the cartoon penguin on their packaging over the years, but not (as it turned out) the particular penguin that they were using at the time of the dispute. Those older registrations were, as part of the outcome of the dispute, largely revoked for non-use on the application of Asda's legal team.

This serves as a reminder to all brand owners. Whilst of course it's common commercial practice to update the shape of your product or even the appearance of your logo over time (whether to respond to trends in design or more pragmatic commercial matters such as here, the cost of production), it is important to keep in mind that where the mark(s) you have registered evolve to differ significantly from what you are actually using, you run the risk of losing trade mark protection altogether, and it is therefore important to try to ensure that your registrations keep in step with the actual use being made of registered shapes, names, logos etc.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.