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After Swiss chocolate brand Toblerone announced it has changed the weight of its products in the UK, lawyers have told WIPR that the brand may have to reconsider its intellectual property strategy.
Toblerone, owned by Mondelēz International, contains milk chocolate with honey and almond nougat. The triangular shape of the bar depicts the Matterhorn, a mountain in The Alps.
Mondelēz has had a 3D mark protecting Toblerone registered at the UK Intellectual Property Office (IPO) since 1996. It covers white, yellow, red, blue and black colours on the branding.
On October 15, it was announced on the Toblerone Facebook page that it was changing the shape of its UK chocolate bars.
It said: “Toblerone remains one of the best value and most delicious Swiss chocolate products in the market. This is because we always work hard to ensure we offer value for money for our consumers, but like many other companies, we are experiencing higher costs for numerous ingredients.
“We carry these costs for as long as possible, but to ensure Toblerone remains on-shelf, is affordable and retains the triangular shape, we have had to reduce the weight of just two of our bars in the UK, from the wider range of available Toblerone products.”
The new shape features wider gaps between the triangles, the 400g bar is reduced to 360g, while the 170g bar, which is sold only in the UK, is reduced to 150g.
WIPR asked UK lawyers about the IP implications of these changes.
Jeremy Pennant, partner at UK-based D Young & Co, told WIPR: “It should be remembered that there is no change insofar as the use and protection the brand owner has for the ‘Toblerone’ name and the highly distinctive packaging.”
He added that what is more interesting is what happens to the trademark protection for the chocolate bar itself. “Will use of the new shape with the gaps be sufficient to maintain a registration for the more mountainous version?” he asked, adding: “The test has two parts—(i) what are the differences? and (ii) do they alter the distinctive character?”
Pennant said that consumers will simply see this as a close variant of the product with which they are familiar.
Tim Cadman, senior associate at Serjeants, added that “Mondelēz have an international trademark registration designating the UK for the old shape of a Toblerone”.
The 3D mark was registered at the IPO in 2000 and covers the shape of the bar.
“In order to keep this trademark valid, it needs to be used. If it is not used for a period of five years, it will become vulnerable to attack from a third party.
“For that reason, if they continue to sell the ‘skinny’ UK-specific Toblerones and do not sell the old shape in the UK, then they may wish to file a new UK trademark application for the new shape.
“However, the present trademark registration remains valid as it has been used in the last five years,” Cadman added.
Charlotte Duly, partner at Boult Wade Tennant, said that one IP related consideration is “whether any existing IP would become vulnerable to challenge”.
“If the Toblerone shape change affects the UK market only, it would need to be considered whether any existing UK trademarks for the shape would eventually become vulnerable to cancellation on the grounds of non-use.”
She added that there is “no doubt the decision to change the shape of a much-loved item of confectionery cannot have been taken lightly”.
“When making any changes to a brand, be it shape, colour or name, it is worth reviewing the IP in place to determine if it is sufficient, or if revised protection is required.”
Following public reaction in the UK, Toblerone said in a Facebook post yesterday, November 8, that “we appreciate the passion of the Toblerone fans around the world. Due to rising costs in making our chocolate, we recently announced a weight reduction in two Toblerone bars”.
A spokesperson for Toblerone, told WIPR: “Toblerone remains one of the best value and most delicious Swiss chocolate products on the market."
The spokesperson added that the company works hard to ensure it offers value for money for consumers, "but like many other companies", it is experiencing higher costs for many ingredients.
"We carry these costs for as long as possible, but to ensure Toblerone remains on shelf, is affordable and retains the iconic shape we all know and love, we have had to reduce the weight of this particular bar," said the spokesperson.
Toblerone, chocolate, trademark, three-dimensional shape, confectionery, Mondelēz International,