Toblerone's Logo and Deceptive Trade Marks in New Zealand
The Toblerone chocolate brand (produced by Mondelez International) has recently been barred from using the iconic Matterhorn mountain peak in its logo, so as not to violate the Swissness Act. This change in logo has come about as a result of Mondelez moving some of its Toblerone production out of Switzerland, to the Slovakian capital of Bratislava. A further change to the packaging will be of the wording “of Switzerland” to read “established in Switzerland”.
Under Switzerland’s Swissness Act 2017, national symbols and Swiss crosses are not permitted on the packaging of products that don’t meet Swissness criteria. The Act requires that any food items using national symbols or which claim to be “Swiss made” must have at least 80% of raw materials come from Switzerland. For milk and dairy products (chocolate), however, the Act requires that 100% of the raw materials originate from Switzerland.
These provisions, no doubt, serve to prevent the public from being deceived or confused into thinking products originate from Switzerland, or that chocolate is “Swiss chocolate”, when it is not 100% Swiss in origin.
Similarly to the Swissness Act, the New Zealand Trade Marks Act 2002 has provisions that prevent the registration of various names, representations or symbols as trade marks in New Zealand, where the use of such trade marks could cause the public to be deceived or confused into thinking there is a connection between the trade mark owner and the name or organisation being referenced, when there is not.
Trade mark protection sought for the following in New Zealand, would likely face “a deceptiveness objection” by the Intellectual Property Office of New Zealand:
– Trade marks containing the names and/or representations of the royal family, without consent;
– Trade Marks containing the names of famous people, or well-known organisations, without consent;
– Trade marks that contain a plant variety name, where the specification does not cover plant material that is of the same type as the plant variety;
– Trade marks containing an International Non-proprietary name (INN) for a pharmaceutical substance, where the specification is not limited to that pharmaceutical substance, or to goods containing that pharmaceutical substance, or to services in relation to that pharmaceutical substance;
– Trade marks containing generic names of pesticides or agrochemicals, where the trade mark specification covers pesticides or agrochemicals which are not limited to the pesticide or agrochemical that the generic name denotes.
There are also a wide range of “Protected Words” in New Zealand, including, for example, the words/symbols for RED CROSS, ANZAC, MINISTRY, GIRL GUIDE, which, when contained in a trade mark, may be prohibited registration. Some protected words may be registered in trade marks with approval from the relevant organisation, however.
Should you have any questions in respect of your trade mark use and protection in New Zealand, we would be happy to assist. Please do not hesitate to contact us.
Written by Ingrid Seegers, 07 March 2023