Dubai Chocolate, what’s in a name?

The viral Middle Eastern inspired chocolate bar, dubbed “Dubai Chocolate”, has been the subject of legal disputes in Germany in recent months, in the face of imitations.

The pistachio-pastry filled bar was originally exclusively sold in the United Arab Emirates by Dubai-based FIX Dessert Chocolatier. Its popularity, gained through widespread social media reviews and recommendations – particularly through TikTok – has meant that the delicacy often sells out within minutes. However, imitations are cropping up in the food retail industry, where supermarkets such as Morrisons, Lidl and Aldi have tried to replicate the original bar, selling them with reference to this nickname “Dubai Chocolate”.

Should I sell my replica chocolate bar as “Dubai Chocolate” to attract consumers, if it does not originate from Dubai?

The give the short answer… no.

In January this year, the Cologne Regional Court clarified that Dubai Chocolate may only be labelled as such if it originates from Dubai, or has another geographical connection to Dubai, and will otherwise mislead consumers. This follows s.127(1) of the German Act on the Protection of Trade Marks and other Signs, which states that geographical indications of origin “may not be used in trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin if such names, indications or signs for goods or services of different origin are used.”

Here, supermarket chain Aldi sold its imitation product in Germany as “Alyan Dubai Homemade Chocolate”, although it was produced in Turkey. The Court asserted that this presented a risk to consumers being misled that the product was manufactured in Dubai, and imported into Germany.

The Court also ruled that the item’s production location in Turkey (labelled on the back of the product) was not satisfactory in mitigating this risk of consumers being misled and issued an injunction against Aldi to temporarily prohibit the sale of the product.

Similarly, in January 2014, the UK Court of Appeal held that a yoghurt product can only be described as “Greek yoghurt” if it:

1. is made in Greece;
2. is created through the use of traditional Greek straining methods; and
3. does not contain thickening agents and additives.

We note that the Frankfurt District Court has come to a different decision to the Cologne Court, finding that the average consumer in Germany is aware that products labelled as “Dubai Chocolate” do not come from Dubai itself, given the viral media craze. However, this case does not serve as legal precedent, and each case will be decided on their own facts.

Therefore, if you intend to sell a product inspired by a location, that is not in fact the place of origin, it is best practice to come up with an alternative product name to this location name. We recommend protecting such names through a trade mark registration, which will help to prevent copycat product names.

At Briffa, we have a wealth of experience across the IP spectrum, including trade mark law. We can help you with navigating trade mark registration of your product or brand name if you are at all unsure if it is compliant with trade mark law, to aid your business’ expansion. Just get in touch to discuss this further.

Written by Prem Shah, Solicitor