South Africa: Chocolate Bar Brawls

Last Updated: 20 June 2018
Article by Jason Drew

Most Read Contributor in South Africa, October 2018

Over the past few years, we've reported on a number of legal battles involving chocolate bars such as Kit Kat and Toblerone. These cases have dealt with the shape or appearance of chocolate bars. Another "food fight" has erupted in the UK, and this time it involves a speciality chocolate manufacturer called Hotel Chocolat and the retail chain Waitrose.

Hotel Chocolat has accused Waitrose of copying the look of, and thereby infringing its right to, a particular chocolate product that it produces. The essential feature of Hotel Chocolat's product is the fact that is has curvy lines, making it easily distinguishable from regular chocolate bars which tend to have straight sides.

According to the designer, the design draws its inspiration from how chocolate would look when you pour it out on top of a table top and let is set. The result is the curvy outline.

Not only does Waitrose's product share the curvy outline, but one particular version which is made of white chocolate and has pieces of meringue and strawberry in it (the Eton Mess) is similar to Hotel Chocolat's product.

In cases of product copying, loss of business is the most obvious form of damage, but in this case, reputational damage seems to be a big issue too.

The cases we've reported on like Kit Kat and Toblerone have involved trade mark rights, in other words, trade mark applications or registrations for product shapes. As we've seen, it can be very difficult to protect and enforce product shapes through trade mark law. The problem is that the authorities need a great deal of convincing that the shape has become so synonymous with a company's product that it is entitled to a monopoly. In the language of IP, there needs to be significant and convincing evidence of acquired distinctiveness. When it comes to registering a product shape as a trade mark you will invariably need to show that you've been using it for a long time and on an extensive scale.

The Hotel Chocolat case, however, involves design law. Hotel Chocolat have a number of European design registrations that claim protection for their unique chocolate bar. Design law is essentially all about protecting what the product looks like. The South African Designs Act, 1993 offers protection for both aesthetic designs and functional designs. When it comes to aesthetic designs, this protection is afforded to "features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof."

The main difference between trade mark law and design law is that, whereas with trade mark law, distinctiveness (invariably acquired through use) is the critical issue, and with design law, it's all about novelty. In other words, you can only get a design registration if the design is new. In terms of South African law, you can file a design up to six months after it is first disclosed to the public. The two forms of protection are therefore at opposite ends of the scale. They can, however, be combined by getting a design registration for a shape that's new and, before the registration expires, applying for a trade mark registration on the basis of the distinctiveness that has been built up. The benefit of a design is that it registers quickly and is not examined in South Africa, while the benefit of a trade mark is that it is effectively perpetual if registered, and provided it is kept in force, by paying the renewal fees every 10 years.

The Hotel Chocolat dispute raises some other interesting issues. One is the imbalance that often exists in IP cases, with IP owners sometimes simply being too scared to enforce their rights. Often, bigger corporate entities are viewed as intimidating targets, with an endless supply of money, while the IP owner may not have this luxury.

Another issue that this case highlights is how IP owners are increasingly making use of unconventional methods in order to take action against infringers. The man behind Hotel Chocolat started off on social media, tweeting as follows: "Imitation is the sincerest form of flattery apparently but hey @waitrose this crosses the line!! As well as breaching our Registered Design Mark, designed to protect innovation." When this failed to achieve the desired result, he wrote to Waitrose, asking the company "to do the right thing." Finally, he resorted to approaching the mainstream media, no doubt in the hope that this would shame Waitrose, a company with a significant public profile, into respecting his small company's IP rights. We'll have to wait and see whether he's successful.

A similar case, which is closer to home, is the recent social media backlash and negative media that Zara received for retailing socks that embodied a similar design to Laduma's own sock design called MaXhosa. In similar fashion, a tweet from a fan who spotted the similar socks at Zara sparked it all. The result – Zara pulled the socks of their shelves. In this case, the IP owner did not have design rights, where possibly he or she should have.

When registered rights are potentially being infringed, and in this case, design rights, it is very important to firstly look at the scope of protection of the design that the owner claimed in the design application. In the South African context, this is determined by the "definitive statement" which is like a claim, as well as the drawings accompanying the application.

Secondly, and importantly, the "prior art" also becomes relevant when defining the actual extent of the design owner's right, ie, whether it is new and original. "Prior art" is effectively any and all existing and/or known products that may have a similar design, ie, they may have one or more features that are similar to or the same as the product that forms part of the design. The prior art should be carefully considered, and in this case, any freely poured and set chocolate with chunks should be considered, provided it was available to the public before Hotel Chocolate applied for design protection.

Thirdly, the alleged infringing product must be directly compared to the registered design. The test applied to determining infringement in South Africa is whether or not the infringing product is the same as or not substantially different from the design. In this situation, the question to be asked is: are the small differences in the outline, or are the differences in the appearance of "chunks" significant enough to differentiate the two?

It is worth remembering that registered IP rights are much simpler to enforce than unregistered rights. The burden of proof is lowered, and the fact that you have a registration certificate is evidence of your right.

However, IP owners should also be cautious of threatening people or companies of infringing their IP (registered or unregistered), and using social media to reach the infringer. Alleged infringers who are prejudiced by false claims may approach the court for relief against an IP owner or others making such threats, should they think they are false. Using social media may apply pressure on the infringer to remedy their wrong, but our advice is that before making any threats, you should seek advice on whether you have IP rights, and whether or not they are being infringed. In addition to this, when innovating a new and original design, it is important to ask for advice early on, to find out whether you have IP that can be registered.

Reviewed by Rowan Forster, a director in ENSafrica's IP department.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions