Toblerone v The O’Bar

For chocolate lovers, Toblerone’s distinctive peaks are instantly recognisable. But how close can another chocolate bar get before its shape becomes an issue? A dispute between Toblerone’s owner, Mondelēz, and British vegan chocolate brand Catherine’s Originals could bring that question into focus.

The dispute

Mondelēz has issued proceedings in the High Court in London alleging trade mark infringement and passing off in relation to Catherine’s Originals’ O’Bar (‘O’Bar’). The product is a segmented chocolate bar with rounded, semi-oval humps, rather than Toblerone’s well-known peaks.

Catherine’s Originals was founded by Catherine Dodd (‘Dodd’) in 2021 and makes its chocolate in Sussex. Dodd says the bar’s shape reflects the ‘O’ in Originals. The business disputes the allegations and maintains that O’Bar has its own distinctive design and identity.

Mondelēz argues that Toblerone’s shape is one of the most recognised product designs in the UK and worldwide.

At the time of writing, details of Mondelēz’s claim have yet to be released. The pleadings should indicate how Mondelēz will argue that the respective shapes are similar. They should also clarify how Mondelēz pleads its passing off case, particularly in relation to goodwill in the Toblerone shape and the misrepresentation allegedly caused by the O’Bar’s existence.

A sweet reminder

Interestingly, this is not the first time a rival chocolate bar has attracted Mondelēz’s attention. Poundland delayed the launch of its Twin Peaks bar in 2017 following a legal warning. It subsequently relaunched the bar after changes to its shape and packaging.

The UK has seen several disputes over the shape and appearance of chocolates and related confectionery products. In the four-finger KitKat case, the Court of Appeal dismissed Nestlé’s appeal in 2017 against the refusal to register the bar’s shape as a UK trade mark. Consumers recognising the shape as a KitKat was not enough, Nestlé had to show that the shape itself, independently of other branding, indicated the product’s commercial origin.

A related, much-publicised dispute concerned Marks & Spencer’s Colin the Caterpillar cake and Aldi’s Cuthbert cake. Although this involved chocolate-covered cakes rather than chocolate bars, it similarly centred on allegations of infringement of a shape trade mark.

Comment

For businesses developing a new product, the practical message is to look beyond the name on the wrapper. A clearance exercise should consider the product’s appearance and packaging, as well as its proposed name. Choosing different branding should not be treated as a substitute for checking the rights competitors may assert over the appearance of the product itself.

For established brands such as Mondelēz’s, the dispute also illustrates the commercial balancing act involved in enforcement. Protecting a recognisable product identity matters, however, proceedings against a much smaller business can generate adverse publicity. The strength of the rights, the commercial objective and the scope for a negotiated redesign should be considered carefully.

Whether this particular dispute ends in a judgment or a compromise remains to be seen. For now, the safest takeaway for new chocolate makers is to conduct comprehensive clearance searches before launching.

A distinctive shape may be a unique selling point, but a dispute over it can leave a bitter taste.