Intellectual property can exist in almost anything and in this case it is alleged to exist in Hotel Chocolat’s (HC’s) chocolate slab product. The niche chocolatier believes that its design has been copied by Waitrose in its own brand chocolate bars.
The Waitrose bars are said to be roughly the same size as those of HC and to have the same type of wavy edges, which distinguish them from the standard version of a chocolate bar with straight sides. They HC slabs also have a collage of different types of edible ornaments set into them which again sets them apart from their mass produced cousins.
HC market one such slab as Caramel & Co. It is described as ‘40% studded with caramelised florentines and caramel puddles.’ The Waitrose product is called Caramel Crunch and looks to have similar ingredients ‘studded’ on its surface. The other HC slab is called Eton Mess and uses white chocolate and is described on its packaging as a ‘strawberry-vanilla meringue chocolate biscuit.’ The Waitrose version is also called Eton Mess and is also made of white chocolate, again adopting a similar surface studded with ingredients using similar shades of bold colours being blues reds and pinks. HC have apparently written to Waitrose complaining about what they claim are copycat slab bars and requesting that they remove them from sale. HC say that customers began asking it if it was making the bars for Waitrose due to similarity between the two respective products.
Waitrose have denied any copying or infringement.
The nature of the IP which is alleged to be infringed is a registered E
U design for the curved-edge of the bars. This could be ‘the’ or at least one of the designs in question – registration number 001438378-0011.
Such a registered design can be a very valuable tool to capture IP which might otherwise not be protected or at least be difficult to prevent from being copied. This type of IP right applies throughout the EU and can protect the whole or a part of a product resulting from the features of its appearance and in particular, the lines, contours, colours, patterns, shape, texture or materials of the product or its ornamentation. As well as ‘products they’ can include packaging, get-up and graphic symbols.
It is a “monopoly” right and allows its owner to stop any 3rd party using the registered design, even if they did not actually copy it. To infringe it does not require to be an exact copy but can just be use of a design which produces the same overall impression on the informed user. Small changes won’t usually be enough to avoid liability. Here therefore, although the registered design above is not identical with the Waitrose slab products, it is likely to be argued that the latter does not create a different overall impression.
Had HC not had this registered design protection it would have had to rely on unregistered design rights, which in the case of the EU only last approximately 3 years (as opposed to 25 years or more), and do require copying to infringe. HC could also pray in aid any relevant registered trade marks which could cover packaging or features of it but not the actual product design. Shape marks are notoriously difficult to register as trade marks, as the Kit Kat wars and these other decisions commented on below amply demonstrate, Toblerone being one well known exception as having a mark on the overall shape of the bar.
It remains to be seen if this particular dispute will be amicably resolved but it does demonstrate that a registered design can offer effective broad protection for product shape and packaging and is a valuable weapon, particularly in the food and drink sector.