Newsletter No

May 2021 Newsletter No. 8 Swiss IP News We provide you with updates on new decisions, the relevant legislative process and other trends in the fields of intellectual property and unfair competition law from a Swiss perspective. Newsletter No. 8 May 2021 TOBLERONE vs. SWISSONE In a recently published judgement of The attacked SWISSONE chocolate bar 31 December 2020 (HG 20 87), the looks as follows: By Roger Staub Commercial Court of Bern dismissed a Dr. iur., Attorney at Law request for a preliminary injunction Partner which Kraft Foods had filed against Cocoa Telephone +41 58 658 52 89 Luxury’s SWISSONE chocolate bar. Kraft [email protected] Foods had claimed that the SWISSONE chocolate bar infringed its various TOBLERONE trademarks and it also asser- ted unfair competition claims. The court denied both trademark infringement and It consists of a series of rounded tetrahe- unfair competition claims. As for now, the dra including small emphasis or gradation judgement on preliminary measures has in the form of rounded triangles. The become final. Kraft Foods is however still series of these tetrahedra may be free to file a lawsuit on the merits. reminiscent of a group of mountains. The SWISSONE chocolate bar comes in square Background (cuboid-shaped) packaging with prominent TOBLERONE is a popular Swiss chocolate and centrally placed bright golden and Benno Fischer-Siddiqui bar brand, which is most known for its SWISSONE lettering on all three sides of MLaw, Attorney at Law distinctive shape: a series of joined the packaging. Two stylized mountain Associate triangles, resembling a group of moun- silhouettes are placed in the “O” of the Telephone +41 58 658 52 51 tains or pyramids. The TOBLERONE shape SWISSONE lettering. The color of the [email protected] is registered as a three-dimensional packaging is dark blue with a shiny gold trademark in Switzerland (No.2P-432512). area on the left-hand side of the opening. TOBLERONE is further known for its trian- Further elements of the packaging include gular packaging in beige/creamy yellow the depiction of a cocoa bean and the color with the red TOBLERONE logo in the number “48” on the upper side and of silhouette of the Matterhorn mountain in three units of the SWISSONE chocolate bar grey: and a filled milk bucket on the front. Decision The Commercial Court of Bern rejected the request in its entirety. It held that there was no likelihood of confusion, neither under trademark law nor under unfair Swiss trademark No. 2P-432512 competition law, and that there was also no exploitation of reputation under unfair competition law. Under trademark law, the Commercial Court came to the conclusion that Product picture 1 Newsletter No. 8 May 2021 even on the basis of a strong scope of no semantic similarities. Furthermore, and even in combination, indeed not be protection, low attention of the relevant due to the strong differences between enough to affirm a likelihood of confusion. public and the strict standard resulting the two chocolate bars, there would also However, the aspect of unfair exploitation from the identity of the goods, the SWIS- be no pre-sale or post-sale confusion of TOBLERONE’s reputation would have SONE chocolate bar would be sufficiently between the products themselves. deserved more careful consideration. different from the three-dimensional According to the Federal Supreme Court, Finally, the court also denied that there TOBLERONE trademark in order to exclude there exists an illicit image transfer in was an exploitation of reputation. The a likelihood of confusion. The angular and terms of arts. 2 and 3 par. 1 let. e of the TOBLERONE packaging and the SWISSONE linear triangles would dominate the over- Unfair Competition Act, if (i) two signs or packaging would create a clearly different all impression of the three-dimensional get-ups are similar, (ii) the younger sign overall impression. The packaging of the TOBLERONE trademark. The shape of the or get-up creates a reference to the older SWISSONE chocolate bar would objectively triangles would strive upwards and one and (iii) the similarity cannot be not be suitable to create associations to appear rather simple as a result. On the interpreted other than as an imitation of Kraft Foods or to goods offered by Kraft other hand, the SWISSONE chocolate bar the older reputed sign/get-up (ATF 135 III Foods. Consequently, the court also denied with its rounded tetrahedra would appear 446, cons. 7.1 – “MALTESERS/KIT KAT an image transfer from TOBLERONE to rather soft and roundish, thereby creating POP CHOC”). TOBLERONE chocolate is SWISSONE. And as far as the similarities a rather flat and also more complex certainly well-known among Swiss between the packaging are concerned, overall impression. Similarities in non- customers. Accordingly, it may be fair to there would be objective reasons for distinctive elements, such as a bar-like assume that the high amount of similari- them: the use of the golden color is to shape due to the positioning of formative ties – including the identity of the element convey value and quality; the reference elements at regular intervals, would not “ONE” – was not just coincidental and that to “Switzerland” is a common quality change this perception. Rather, because it cannot be “interpreted other than as an statement for chocolate products; the use of further differences such as different imitation” of TOBLERONE. This applies of mountain motifs shall also refer to distances between the formative elements, regardless of whether one or the other Switzerland, the country of mountains; different numbers of formative elements consumer may pronounce the element the similar packaging size can be explai- or the placing of the tetrahedra on a “ONE” differently or in the same way. ned by the fact that chocolate is often cuboid base, the relevant public would There is at least a clear association of the offered in 100g size; the suffix “one” is not assume that the products come from SWISSONE chocolate with the well-known to be understood as an allusion to different companies. TOBLERONE. TOBLERONE due to the preceding English For the assessment under unfair compe- word element ”Swiss”. tition law, the court primarily contrasted The Commercial Court of Bern thus came The Walder Wyss Newsletter provides comments on new the packaging of the two products. The developments and significant issues of Swiss law. These to the conclusion that the TOBLERONE packaging would differ in various ways: comments are not intended to provide legal advice. Before packaging/chocolate bars and the taking action or relying on the comments and the infor- they have a different shape (square vs. SWISSONE packaging/chocolate bars mation given, addressees of this Newsletter should seek triangle) and coloring (dark blue vs. specific advice on the matters which concern them. would create clearly different overall creamy yellow) and contain different impressions which would exclude both a © Walder Wyss Ltd., Zurich, 2021 figurative elements (three units of the likelihood of confusion and an exploitation SWISSONE chocolate bar with milk bucket of reputation. vs. the shaded Matterhorn). The court laid also great emphasis on the differences Comment between the brand names SWISSONE and TOBLERONE as depicted on the packaging. This decision is a further example for They would differ in various aspects. how tough it can be to fight against look- First, visually because SWISSONE was alikes before Swiss courts, particularly held in thin font and glossy gold color when it comes to obtain preliminary while TOBLERONE was dominated by its injunctions. Nevertheless, we take the red color; second, acoustically because of view that the verdict could just as easily the different amounts of syllables and have gone the other way, in particular because the element “one” in SWISSONE with regard to the unfair competition was likely to be pronounced in English claims. The similarities in the logos, in and thus differentlyto “one” in TOBLERONE; the packaging and in the shapes of the and third, in their meaning as there are chocolate bars may each on their own, 2.

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