Hotel Chocolat is a UK-based chocolate maker that distinguishes itself from competitors by growing the cocoa used to make the chocolate in their products, and by the quality and authenticity of the other ingredients of their products. Hotel Chocolat has built a brand that conveys luxury and sustainable business practices. Therefore, the appearance on the shelves of a UK supermarket, Waitrose, of what is arguably a copycat product of lower quality did not sit well with Hotel Chocolat, who viewed the Waitrose product as erosion of their brand and brand values.

Hotel Chocolat alleged that the Waitrose branded chocolate slab infringed its registered European Community Design of a curved chocolate slab, and demanded removal of the product from stores. Waitrose denied the allegation. Unfortunately for Waitrose, there were reported instances of consumers questioning whether Hotel Chocolat were contracted to produce the curved chocolate slab for Waitrose. Although this matter was not litigated, demonstration of actual confusion in the marketplace undermines a defence to deception in the marketplace.

According to Hotel Chocolat, the initial demand to Waitrose seemed to fall on deaf ears. In a clever marketing move, Hotel Chocolat offered to swap a Waitrose product with a Hotel Chocolat product without charge in a so called “Slabgate amnesty”.

Despite Waitrose’s position that their product did not infringe Hotel Chocolat’s registered European Community Design, Waitrose has agreed to cease stocking the product once existing stock has been sold, citing the desire to avoid a protracted legal dispute. It was certainly brave of Hotel Chocolat to take on the might of Waitrose, and without a registered European Community Design, the strength of Hotel Chocolat’s position may be been diminished.

This story once again underscores the importance of registering and enforcing your intellectual property rights, particularly in those instances of a carefully cultivated brand.