Toblerone v Twin Peaks

The shape of the Toblerone chocolate bar is protected by a 3D trade mark registration in the UK (WO 0727788).  The owner of the registration, Mondelez, has brought an infringement action against discount retailer Poundland over its new Twin Peaks chocolate bar, as reported in the UK press.

It is notable that Toblerone’s registration is for a bar with single peaks, whereas Poundland’s bar has double peaks.  In response to Mondelez’s claims of infringement Poundland’s counterclaim is that Mondelez’s registration is not valid. This counterclaim comes about, in part, due to the recent change in shape of Mondelez’s Toberlone bar, such that there are now larger spaces between the peaks. 

The shape of the new Toblerone bar has been reported as weakening the 3D trade mark registration, with questions being raised as to whether the new shape counts as use of the trade mark registration due to the significant differences in the 3D shape.

Mondelez has also brought an action for infringement of its registered design for the Toblerone packaging (EU 031203), together with a claim for “passing off”.  Both Mondelez’s Toblerone and Poundland’s Twin Peaks are in gold packaging with a picture of a mountain and the product name written in red capital letters. 

Poundland's defence is that consumers will not be confused between the rigid, triangular shaped cardboard box of Toblerone and its soft “formless packaging”, or between the names of the products.

It will be interesting to see if Poundland manages to overcome Mondelez’s claims.  Our view is that, based on the previous PENGUIN v PUFFIN case (United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513), concerning the similarity of product design between the Penguin Biscuit and Asda’s Puffin biscuit), Mondelez will win the passing off case.

Poundland has delayed the launch of its Twin Peaks bar, pending the outcome of this case.