With Easter fast approaching, and eggs and bunnies tempting us everywhere we look, chocolate trade marks are front and centre of a great deal of marketing material at present!
Many of our major confectionery brands have protected their non-traditional trade marks such as colour trade marks and shape trade marks. Securing protection of such non-traditional marks is not a straightforward process, but when registered these trade marks add immense value and recognition to the branding of a business.
CHOCOLATE SHAPE TRADE MARKS
It can be quite difficult to have a shape trade mark registered, as in these cases an applicant needs to show that a particular shape trade mark is capable of distinguishing chocolates. To do this, convincing evidence of use of the trade mark is needed, to show that consumers genuinely rely on the shape to identify the chocolate’s origin.
An example of an unsuccessful trade mark application in this area was Guylian’s sea shell shaped chocolate. When Guylian applied to register the sea shell shaped trade mark in Australia, it was found that the shape was not sufficiently distinctive to be accepted without evidence of use. When Guylian provided evidence of use, it was considered insufficient. After an appeal to the Federal Court, it was ultimately found that sea shells are not an invented or distinctive shape and the shape has become generic, particularly in light of evidence submitted that traders other than Guylian manufacture chocolates using the same or similar sea shell shape.
However, there are some success stories for chocolate companies securing exclusive rights to certain shapes for their chocolates in Australia. A few are:
- Trade Mark 706789 – Toblerone – three dimensional triangles attached to each other
- Trade Mark 822780 – Nestle – Kit Kat four bar/finger shape trade mark
- Trade Mark 923170 – Ferrero registration for the shape and of the Kinder Surprise Egg
- Trade Mark 923171 – Ferrero registration for the shape of its Ferrero Rocher chocolate
- Trade Mark 1116344 – Lindt and Sprungli’s registration for the shape of its Easter bunny chocolate.
COLOUR TRADE MARKS
A colour trade mark can be similarly challenging to register, and again, significant evidence of use is required, to convince a Trade Marks Examiner that a particular colour has become a main identifying feature of a product.
Protecting the gold Easter Bunny in European countries including Germany has proven difficult for Lindt and Sprungli. EU decisions over the last 10 years demonstrate that standards for trade mark protection regarding the sufficient reputation for colour marks acquired by use are high.
Perhaps the most well-known colour trade mark registered in Australia for chocolate is Cadbury’s purple.
Cadbury has been successful in obtaining several colour trade mark registrations for the purple colours it uses in relation to the following goods “milk chocolate in bar and tablet form, milk chocolate for eating, drinking chocolate, and preparations for making drinking chocolate.”
The Lindt teddy bears have also claimed protection for the colours gold, red and brown, in combination with their three-dimensional teddy bear shape.
In both of these cases, significant evidence of use was needed to secure exclusive rights to these colours in relation to chocolate products.
Happy Easter everyone!