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Chocolate Slab-Gate

Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.

Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab.  This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose.  Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.

During the contention, Hotel Chocolat’s co-founder also declared a chocolate “amnesty”, offering anyone who had purchased one of the Waitrose chocolate slabs to exchange it for one of Hotel Chocolat’s equivalents – free of charge.

Hotel Chocolat had previously registered the shape and appearance of their chocolate slab as a Registered Community Design (RCD).  An RCD is a means of obtaining effective design protection across the European Union and is generally used to protect products whose design, product shape, packaging or appearance, for example, are often more important than how the product works or its name.  RCDs can be particularly advantageous in the food, beverage and fashion sectors.

The recent dispute serves as a useful reminder to brands wishing to ensure brand protection from “copycats” or other brand providers which are less luxurious than their own, to consider protecting the appearance of their own products/product parts in this way. As a result of its RCD, Hotel Chocolat had a much more robust position when objecting to Waitrose’s alleged infringement than that of not having an RCD.

Without an RCD, Hotel Chocolat might have been able to rely on unregistered design rights.  However, an unregistered design right is not a “monopoly right”, which drastically reduces its ability to protect a design in the event of an alleged infringement.

Whilst Waitrose strenuously denied that it had infringed Hotel Chocolat’s designs, it stated that it was not in its best interest to enter into a legal dispute with Hotel Chocolat.  As such, once Waitrose’s existing chocolate slabs are sold, it was agreed that they would no longer be stocked and sold in Waitrose stores.

Keisha Phippen contributed in writing this post.

Copyright 2019 K & L Gates

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K&L Gates’ Intellectual Property Litigation practice is a sophisticated, worldwide enterprise with experience in all aspects of IP litigation. Our clients include those protecting emerging communications technologies, novel drug therapies, iconic brands, trade secrets, copyrights, and other proprietary information. Law360 named us a “Practice Group of the Year” for IP Law, and the National Law Journal named our practice to its “IP Hot List” of the top practices in the U.S. The NLJ said of K&L Gates, “Big firm. Big wins.”

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