Mondelez, the registered owner of the triangular prism shape of Toblerone, insists that budget confectionery chain Poundland is attempting to launch a copycat bar that is deceptively and confusingly similar to Toblerone.
Mondelez is claiming that the overall shape and use of triangular prism peaks of Poundland's bar, Twin Peaks, together with its gold packaging infringes its registered rights.
In defending its right to launch a copycat bar (with two peaks rather than one), Poundland, has challenged the the distinctiveness of Toblerone's single triangular prism shape. It says that given the release of a Toblerone product with fewer peaks and bigger gaps between its single peaks, the reputation in the Toblerone trade mark has been "irretrievably abandoned".
The dispute echoes the long-running legal battle between confectionery rivals Nestle and Cadbury over the registrability of the shape of the KitKat bar (i.e. whether a shape is distinctive enough to function as a trade mark). Distinctiveness is a central test in determining whether a trade mark is capable of registration, which makes it difficult to register shapes in the first place. However, trade marks (including shape marks) can also acquire distinctiveness through consistent use.
Unlike KitKat, Toblerone already has a registered trade mark and clearly was a distinctive shape at that time. To protect that distinctiveness and prevent the single triangular prism peak becoming generic, Toblerone is taking action against the confectionery copycat, seeking damages for trade mark infringement and passing off.
In legal defence documents filed earlier this week, Poundland says the triangular prism shape of the Toblerone bar, which was registered under an EU trademark in 1997, is no longer distinctive partly because of the existence of the new version.