An independent chocolate producer in West Sussex is defending a legal challenge brought by Kraft Foods Schweiz Holding GmbH, a Mondelēz group company, concerning the design of one of its products, the O’bar.
Produced by Catherine’s Originals, the O’bar consists of a narrow rectangular chocolate bar divided into 10 rounded sections that extend from the main body.
The Guardian reports that Mondelēz has lodged proceedings with the High Court in London, alleging that Catherine’s Originals has infringed its trade mark rights.
Catherine’s Originals is a small vegan chocolatier founded in 2021 by Catherine Dodd and her partner, Jamie Miller. The company has rejected the allegations and is now receiving advice from lawyers.
In a statement published on the company’s website, Dodd said: “We strongly disagree with Kraft’s claim against us” and confirmed that the business is working with a legal team.
On her blog, Dodd described the proceedings as “frightening”. She also said the O’bar’s design was intended to reference the ‘O’ in ‘Originals’, rather than imitate another brand.
The dispute centres on the shape associated with Toblerone. The Swiss chocolate brand was established in 1908, before Kraft Foods acquired it in 1990. During the same decade, the shape of the bar secured trade mark protection in Europe. Mondelēz was created in 2012 after Kraft Foods separated its global snack and grocery operations.
Mondelēz International told the Guardian: “We have a responsibility to protect our trademarks and intellectual property, which we take seriously.”
The company added that it had tried to settle the matter “constructively and directly with Catherine’s Originals over several months but unfortunately have been unable to reach an agreement”.
Michael Conway, a partner in the intellectual property team at Birketts LLP, said Mondelēz’s decision to bring the case was not unexpected.
“The Toblerone shape is one of the most famous and closely protected shape trade marks on the market, and brand owners are generally expected to enforce rights they consider may be at risk,” he said.
However, Conway noted that bringing a claim does not guarantee success. The court must determine whether the competing products are sufficiently alike under trade mark law.
“Shape trade marks are often interpreted relatively narrowly, and the court will need to assess the extent to which the products’ shapes are actually similar,” added Conway.
“However, where a mark enjoys the level of reputation associated with Toblerone, consumers do not necessarily need to be confused into believing the products come from the same source.
“If the shape used by another trader is found to be sufficiently similar to evoke the famous Toblerone mark and create a ‘link’ in the mind of the average consumer, that may be enough to support an infringement claim.”
Laurie Bray, a senior associate trade mark attorney at European intellectual property practice Withers & Rogers, said legal action over a product’s physical form remains unusual.
“It’s quite rare for a brand owner to sue another over the shape of one of its products.
“Even with a trade mark registration in place protecting the shape of its Toblerone chocolate bar, it could be challenging for Mondelēz to prove that the bar made by Catherine’s Originals is sufficiently similar in shape that it would cause customer confusion.
“As a much smaller British manufacturer, a lengthy court battle may be a daunting prospect for Catherine’s Originals, and Mondelēz could well decide to take the matter to appeal if the High Court’s decision doesn’t go their way.”
The proceedings highlight the importance of intellectual property protection across the food and beverage industry. As food and drink consumer trends continue to encourage distinctive formats, brands are increasingly assessing how product design, food and drink packaging and presentation can support market differentiation.
The current dispute also recalls an earlier disagreement between Mondelēz and Poundland over Twin Peaks, a long chocolate bar featuring ‘M’-shaped peaks. Poundland postponed the product’s launch and redesigned it following the dispute.
Under the terms of a legal settlement, Poundland was permitted to sell the 500K Twin Peaks bars already in production, provided they used “distinctive packaging” that was clearly different from Toblerone’s presentation.
Poundland introduced a revised version of Twin Peaks the following year, incorporating a changed bar shape.
Mondelēz has also previously pursued a major trade mark dispute involving Nestlé. In 2018, the confectionery group—which also owns Milka and Oreo—challenged Nestlé’s attempt to register the four-finger format of its KitKat bar as a trade mark. The case eventually reached the Court of Justice of the European Union.
Mondelēz ultimately succeeded in preventing Nestlé from securing the European trade mark, although the proceedings lasted more than 10 years. The case remains a notable example of the long-term commercial stakes involved in protecting product shape and brand identity, particularly amid wider food manufacturing trends and food and drink industry innovation.
Bray said businesses should consider whether the physical appearance of a product can be protected, although securing those rights can be difficult.
“It can be very difficult to obtain commercial protection for the shape of a product, but it’s definitely worth considering.
“In the world of fast-moving consumer goods, and particularly with the rise of dupe culture, protecting the different aspects of a product’s distinctiveness is vital to defend the brand’s market position. When considering a shape mark, it is even more important to seek legal advice in order to get your application right from the start, and to ensure your path to registration is clear.”
The case also reflects the broader commercial environment facing food and drink manufacturers. Alongside food processing technology, food distribution trends, food and drink sustainability and evolving food and drink regulations, companies must manage brand protection across increasingly competitive markets. Effective food and drink marketing now depends not only on product quality, but also on securing the visual features that consumers associate with a particular source.
