Registering shapes, sounds, smells and colours as trademarks

In 1997, when Brian Harvey was fired from East 17 and the BBC first aired the Teletubbies, big things were also happening in the trademark and chocolatier world – Toblerone’s application in July 1997 to register the shape of their triangular-shaped bar succeeded.

Registering shapes, sounds, smells and colours as trademarks are, surprisingly, possible. But it is not straightforward. Often the stumbling block met by such applications is the lack of ‘distinctiveness’ of the mark. Nestlé came up against this when attempting to register the shape of the four-fingered KitKat chocolate bar design as a ‘shape mark’: their application was thrown out by the Court of Appeal on the ground that (among others) its shape was not distinctive enough and further that the chocolate treat’s shape was hidden from view by its foil wrapping. The Court held that consumers were more likely to rely on the name KitKat and other word and pictorial marks to distinguish the brand, rather than the concealed shape.

So how did Toblerone get away with it? There were several reasons, but part of Toblerone’s success was down to their advertisements at the time which made much of the triangular shape through the creative depiction of triangular bees, triangular honey and so on. All this helped to demonstrate the importance placed on the recognisable and distinct shape of the product.

However, outrage has arisen again in the chocolate world. Toblerone have recently downsized their chocolate bars as a result of rising ingredient prices, reducing their 170g bars to 150g, and the larger 400g to a pitiful 360g. However, their prices remain the same. To bring the weight down, Toblerone retained the triangular shape and packaging but increased the space between each triangular-shaped piece.

Now Poundland has weighed in, arguing that Toblerone is weakening its rights by changing the shape of the product and as a result, the shape is no longer distinct enough to enjoy trademark protection. Poundland has clearly spied a business opportunity and is reported to be planning to release rival chocolate treat “Twin Peaks” – another triangular-shaped bar – to satisfy customer demand.

Unsurprisingly, Toblerone are less than impressed by Poundland’s proposals and will seek to bring a claim against Poundland for “passing off” and trademark infringement. However, Poundland state that any regulation previously enjoyed by Toblerone has been “irretrievably abandoned” by the launch of the new product, of which the public appear to disapprove. Whether a legal battle between Toblerone and Twin Peaks ensues in respect of Toblerone’s registered shape mark and the altered design, we shall have to wait and see.

If you have any questions regarding the registration of trademarks, Ashtons Legal work closely with specialist Patent and Trademark Attorneys.

If you have any disputes arising around trademarks, be they shape marks or otherwise, or any other intellectual property matters, please do not hesitate to contact our dispute resolution team.