In what has been dubbed “slabgate”, Hotel Chocolat has recently settled a dispute with Waitrose regarding copycat chocolate slabs.
Hotel Chocolat claimed that Waitrose infringed its IP rights in its wavy-shaped slab, including its Registered Community Designs (RCDs) (example RCD here). Hotel Chocolat’s co-founder also took to social media and the company offered to exchange the Waitrose bars for Hotel Chocolat’s equivalents free of charge. Waitrose has now agreed to discontinue making the bars and to sell-through the remaining stock.
RCDs can sometimes be overlooked by brand owners, yet they are a quick and cost-effective way of building legal rights for the look and feel of products, packaging, and other graphics such as apps and icons. This is especially important for brands with a USP within a crowded market and those offering luxury where others offer a down-market alternative. Here, Hotel Chocolat didn’t care just about the aesthetic of the Waitrose product but also about the fact that the ingredients (and overall quality of the end product) were inferior, tarnishing the Hotel Chocolat brand by association.
Brand owners are increasingly employing social media and PR to address IP issues. For example, the Brewdog owners changed their names by deed poll to Elvis after receiving a letter from Elvis Presley’s estate over their use of Elvis Juice on beer (see here). PR is no substitute for having a good legal case, although it can be leveraged to great effect to amplify a position, bring public opinion into the discussion, and accelerate negotiations.
With the UK joining The Hague Convention on Industrial Designs 13 June 2018, there’s never been a better time for brand owners to consider filing registered designs in the UK, EU, or further afield. Whilst the rights provided under design law are not equivalent to or as strong or long-lasting as trade marks, they are particularly useful for secondary assets that don’t meet trade mark registrability criteria or don’t warrant the spend of trade mark protection. In this day and age of slavish imitation, counterfeiting, and e-commerce, some protection is better than none.