Toblerone moves mountains in Switzerland

Toblerone is an IP practitioner’s dream product. It has it all. The iconic name and logo are protected as trade marks, the design and layout of the packaging is protected by copyright, and the shapes of the chocolate bar and its packaging are registered as trade marks and designs.

However, one of the major complexities surrounding IP rights is that they are governed by national and in some cases regional and international laws. Therefore, the extent to which a particular product, its brand, its design etc. is protected often varies from territory to territory.

One of the peculiarities of the Swiss legal system is that if you want to use certain words and images that relate to Switzerland, you have to show that you have a connection to Switzerland.

For example, we are aware that an application for a trade mark incorporating the word MONTANA was recently refused in Switzerland, because the word was viewed as descriptive of a well-known region in Switzerland; and it would only have been possible to secure registration of the trade mark if the Swiss trade mark office was satisfied that it had acquired a secondary meaning.

In Toblerone’s case, the company’s decision to move some of the chocolate bar’s production outside Switzerland meant that it was no longer in compliance with certain marketing restrictions relating to the use of Swiss iconography. Accordingly, the image of the Matterhorn mountain peak had to be removed from Toblerone’s packaging and replaced with the a more generic image of an Alpine mountain; and the wording on the packaging had to be changed to “established in Switzerland”, rather than “of Switzerland”.

The relevant Swiss legislation provides that for milk-based product to be described as “made in Switzerland”, 100% of the raw ingredients must be sourced from Switzerland (with exceptions for ingredients, such as cocoa, that can’t be sourced such Switzerland) and the majority of processing must also take place in Switzerland. The rationale for the legislation is that products branded as “made in Switzerland” are apparently sold at prices 20% higher than comparable goods from other countries.

Briffa comment

As this case indicates, there are a myriad of issues to consider when manufacturing, marketing, selling and distributing food products (or indeed any products) internationally. These include, in particular, issues that may arise relating to branding and trade marks, as well as issues that may arise relating to packing design and labeling regulations.

If you are considering launching a new product and you are seeking advice on the intellectual property issues, and related legal issues, it’s a good idea to consider at least the following points:

1. What are your key ‘brand identifiers’ (e.g. your headline brand name and logo, your product name and logo, and any distinctive taglines, colours, shapes, designs, smells, sounds and/or moving images that relate to your brand and its identity);
2. Are these brand identifiers sufficiently distinctive and established/associated with your brand to be protected/monopolized by you (e.g. it is often possible to exercise exclusive control over a distinctive brand name or logo, but it can be more challenging to exercise exclusive control of non-conventional trade marks such as colours and shapes);
3. Who has created the design of your product and its packaging? An in-house design team or an external design company or consultant? In either case, are contracts in place securing ownership of any unregistered rights (in particular copyright and design rights) in the design of that product and its packaging?
4. Is the shape and/or appearance of your product and/or its packaging new, individual or distinctive? If so, it may be possible to secure a design registration or even a trade mark registration for the shape and/or appearance of that product and/or its packaging, making it more difficult for copycats to replicate.
5. Do you have service contracts in place regulating the manufacture, marketing, sale and distribution of your product? If so, do those contracts take account of important factors such as quality control and labelling regulations (manufacturing contracts), as well as brand consistency, continuity and integrity (marketing, selling and distribution contracts)?
6. And lastly, have you considered territory specific legal and regulatory requirements, such as packaging and labelling rules and regulations that might apply in a particular territory?

Briffa is a firm of specialist intellectual property lawyers who advise a broad spectrum of businesses on the legal issues arising in relation to the identification, protection, commercialisation and enforcement of their intellectual property rights at home and abroad. If you would like to arrange a free 30-minute consultation, please feel free to get in touch on info@briffa.com

Written by Éamon Chawke – Partner