Infringement by Tony Chocolonely as a broader social purpose?

Tony Chocolonely is known for its mission to produce slave-free chocolate bars. It has therefore launched a campaign to make consumers and other chocolate producers aware of the appalling conditions in the cocoa industry. This campaign however, can be seen as quite controversial when it comes to the legal field.

According to Tony, it’s an action with a nod to the other chocolate producers. Tony hopes that this statement helps to achieve cooperation to fight together against slavery in the cacao industry. A nicely thought out action, but also risky. This action could namely lead to an infringement of both trademark and copyright.

To do so, Tony designed four new wrappers that refer to other well-known chocolate brands like Twix, KitKat, Ferrero Rocher and Toblerone.[1]In a general sense, the owner of these trademarks can take action against this if there is a likelihood of confusion.

A likelihood of confusion does not seem to be at issue with respect to the word marks. It is true that the colour schemes of the well-known trademarks have been copied, but the well-known word marks themselves have not. Instead of the word marks of the well-known brands, Tony put its own word mark on the wrappers. Whether the rightful claimants of the trademarks Twix, KitKat Ferrero Rocher and Toblerone can rely on trademark rights therefore depends on the way in which the figurative marks of these trademarks have been registered.

In addition, the packaging of these chocolate products is protected by copyright. An infringement is assumed if an original combination of design and colour elements is adopted and the Tony Chocolonely chocolate products have acquired the same overall impression as a result. This is not allowed without the permission of the right holders; not even in respect of a ‘good cause’.

It therefore strongly seems that Tony Chocolonely has infringed upon the trademark- and copyright of the other well-known trademarks in its campaign. We therefore do not believe that Tony Chocolonely has already produced these chocolate products on a large scale. In a possible court case, Tony will of course defend herself, but more importantly; Tony will want to expose the abuses in the cocoa industry.  We are looking forward to it!

[1]News report Amsterdams Dagblad, https://www.ad.nl/koken-en-eten/tony-s-chocolonely-wil-cacao-industrie-opnieuw-wakker-schudden~a2b4210bf/.