Eileen O’Gorman, partner at Dublin firm Gleeson McGrath Baldwin, writes on the way the law shapes your Easter egg.

Most people tucking into their chocolate egg or rabbit on Easter Sunday would be surprised to hear the extent of the legal wrangling that has ensued on the colour of the wrapper or shape of the confectionery.

The legal battles are far from sweet, even in victory, judging from the lengths the parties go in exhausting all avenues of appeal. One thing is clear, however - the litigation must be worth it.

Chocolate Bunny Melt Down

Chocolate bunnies have been breeding in numbers in the homes of Austrian and German chocolatiers since the mid 1900s, so when Lindt, producer of the familiar gold foil wrapped bunny with a red ribbon around its neck and bell at its throat, sought to protect its position in the market by registering a European Trademark for the shape and styling of its famous chocolate rabbit – now seen en masse in every supermarket and newsagent in the country – a rival German manufacturer of chocolate rabbits of a similar shape and style issued proceedings to challenge the bona fides of Lindt’s application,heralding a sleuth of cases across Europe and near chocolate bunny melt down.

Lindt became embroiled in further litigation when it sought registration for a chocolate bear using the same wrapping as its bunny: gold foil covered with the red ribbon and bell.This time the challenger was Haribo, the gummi bear giant that owns the word trademark for ‘gold bears’ and German equivalents, ‘Goldbaren’ and ‘Goldbar’. While Haribo has no chocolate bear on the market, it claimed that its word trademark, although associated with its gummi bears, would be damaged if registration proceeded for Lindt’s gold bear.

Chocolate and sweets have been the subject of novel and interesting litigation over the years. Manufacturers of our favourite jellies and bars have engaged in costly litigation on everything from their wrapping to the distinctive shape of popular chocolate products.

Consumers are familiar with the concept of trademarks but in most circumstances attribute them to the name or brand of their favourite confectionery, be it, say, a ‘KitKat’ or an ‘Aero’. These days protecting the name of the chocolate product doesn’t appear to give the chocolatier enough comfort and manufacturers are pushing out the boundaries of traditional trademark law to protect not just the names but also the shapes of the confectionery, the colour of the wrapping and even in some cases the smell of products. The reason being the intrinsic value in such trademarks, which effectively give the owner a monopoly over the use of a mark.

Trademarking Shapes, Scents and Sounds

Non-traditional trademarks, including shapes, get-ups, scents and sounds, are becoming more prevalent in various trademark registries around the world.

As with traditional trademark applications ‘3D marks’ are also assessed for their suitability for registration using the same grounds.

Staying with chocolate for the season that’s in it Cadbury achieved success with its application to register the colour purple for chocolate bars and other chocolate-based confectionery. The victory did not come easy. This registration was also the subject of extensive, and presumably bitter, litigation. While lower courts, bolstered by objections from rivals such as Nestle, found Cadbury’s application to be too vague and refused to register it, Cadbury persisted and on appeal it was found that ‘purple is distinctive of Cadbury for milk chocolate’. The lesson is: if you associate your product with and consistently use a colour there is a possibility that it can be protected as a trademark.

Cadbury’s main opponent Nestle is no stranger to attacks from competitors in the confectionery turf wars. A trademark in respect of the shape of its four-fingered Kit Kat bar was challenged by Cadbury. This mark was a three dimensional trademark where the attack by rival chocolatier Cadburys proved fatal in the UK High Court.

The War of the “M’s”

Sweden set the stage for the war of the ‘M’s between Kraft’s chocolate covered peanuts Ms and Mars’s M&Ms. Following on from the Kit Kat case Kraft has also attempted to register the 3D prism shape for Toblerone.

And it’s not all sweets and chocolate: Hersheys in the USA, perceiving a threat to its trade dress, took issue with the decoration on a company’s delivery truck.

While trademark registration is not restricted to words, names and the traditional logos andcan include colours, shapes and other non-traditional marks they have to meet the standard criteria and have a distinctive character. That is probably the reason that nobody has taken on the generic chocolate egg, well not to date in any event.

So, when you are munching into your first taste of chocolate after Lenten sacrifices, be it shaped like a bunny, chocolate fingers or a prism triangle and wrapped in purple or gold, spare a thought for the time, effort and money that went into fighting for its protection.