Amelia Manera is a JD candidate at Osgoode Hall Law School.
In the world of candy, Reese’s distinct shade of orange tells the consumer that a tasty peanut butter and chocolate treat resides within the packaging. And while the colour orange may be a natural choice when trying to indicate peanut butter, Mars, in trying to enter that market using a similar colour, came too close for comfort.
It was reported on Tuesday, May 24, 2011, that The Hershey Co. had dropped its trademark infringement case against Mars, Inc. In November of last year, The Hershey Co. filed a lawsuit against Mars, Inc. in Pennsylvania claiming that the packaging for Mars’ Dove peanut butter and chocolate flavoured bars infringed the trademark Reese’s holds in the orange colour of the packaging. Mars, Inc. counterclaimed in Virginia seeking a declaration that its packaging did not infringe the packaging trademark. By the following March, both parties had notified the courts that they were negotiating a settlement. A settlement has finally been reached between the two parties and on May 23, 2011, the parties informed the courts that they have agreed to “dismiss with prejudice all claims asserted in this action.”
While the details of the settlement are not known, it would appear that it included a provision for a change to the packaging of the Dove peanut butter and chocolate bar. A completely orange version of the packaging can be seen in an article, here. On the current Mars website one can now see the diminished proportion of orange used on the packaging for the Dove peanut butter and chocolate bar.
Disputes regarding colour trademarks are now appearing in the news more frequently. Within the fashion industry, a dispute concerning red soles on women’s high heeled shoes was recently reported between Christian Louboutin and Yves Saint Laurent (read also the feature post guest blog in the IPilogue, “Red Hot: Fashion Designers Wage War over Shoes”). In the food industry, a trademark infringement case involving, inter alia, a specific colour of green on bread packaging was reported here. And, the signature yellow colour of Whom-O’s Slip ’n Slide toy was the topic of a successful infringement case reported here.
In terms of the Hershey-Mars dispute, while I think the Dove packaging was comprised of a shade of orange that was distinctive from Hershey’s and did not amount to infringement, I also think that it was important for Hershey to pursue an infringement action against Mars in an effort to maintain protection of its trademark rights.
Maybe I’m just confused, but I actually see little or no resemblance between the Mars and Hershey orange wrapping. (You can find the Reese’s wrapping at this link: http://www.hersheys.com/reeses/products.aspx#/REESE'S-Peanut-Butter-Cups)
Does this mean that no company can use orange wrapping for a candy bar or does the candy bar have to contain both peanut butter and chocolate to merit infringement (i.e. the content of the candy bar is essential)? Could Reese’s potentially sue a company that used orange wrapping on a candy bar that only contained coconut?
I understand that Reese’s is protecting their brand/trademark and preventing others from using their likeness to sell products. I’m certain that many will not agree; however, in this case I just didn’t see Hershey stepping over the line.
Cadbury conducted prolonged passing-off litigation in Australia against a local chocolate bar maker, alleging it had a monopoly in the colour purple for its chocolate bars — and no, Alice Walker did not intervene. Cadbury lost, but not before alleging, unsuccessfully, that the trial judge was biased because he had ruled that some of their their expert evidence was “vague, tendentious and of little weight”: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited  FCAFC 8 – an interesting argument given the similar finding very recently by the SCC in the Masterpiece case that similar expert evidence there in a trade-mark infringement confusion case might be similarly labelled.
I don’t know what it is about the colour purple but Glaxo recently lost an attempt to monopolize that colour for inhalers in Canada: Glaxo Group Limited v. Apotex Inc., 2010 FCA 313.
Very stupid. I always thought it was lame that organizations can trade mark “colors”. Slogans is one thing, colors are a completely different thing. People can’t “read” anymore? They have to recognize their snack by the color of the package?
What color does Soylent Green come in?
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