Partial Victory for Hval Sjokoladefabrikk ASA in Chocolate Battle
31. July 08
Hval Sjokoladefabrikk ASA have sued Brynhild Gruppen AS for infringement in Hvals design on ”fargepletter” (color speckles), and Brynhild countersued for invalidity of the design registration. The sentence from the District Court of Oslo was appealed. The judgment from the Appeal Court maintains the validity of the design registration and sentence Brynhild to for pay damages to Hval for design infringement for round, but not rectangular, chocolate pieces.
In 2002 Hval developed “fargepletter”; round chocolate pieces with small colored
chocolate pieces imbedded on top. The sale of this bulk product became a success,
and protection was sought for the design in 2004. In 2005 the competitor Brynhild
started selling an equivalent product. Hval demanded that Brynhild should stop
the production, and Brynhild started selling a rectangular chocolate piece in
order to replace the contested, round product, but still maintained marketing
and sales thereof until 2007. Hval sued Brynhild for infringement, demanding discontinuation
of production and marketing, as well as damages. Brynhild countersued, demanding
that the design registration should be declared invalid.
Borgarting Appeal Court declared that the design registration for Hval’s round
chocolate pieces is valid, since the registered design is considered both novel
and of a different individual character than known products. Other chocolates
with colored chocolate pieces on the market have said pieces molded into the chocolate,
not applied to the top thereof. Additionally, these products are rectangular chocolate
bars, not round pieces, with the exception of similar shaped products from Israel
and South Africa, which were not considered by the Court as “said countries are
in a such geographically distant region that they are not a hindrance for the
design to be considered “novel” here” in accordance with § 5 no 1. of the Design
Act.
Regarding infringement, the Court of Appeal declared that Brynhild’s round chocolate
pieces with small colored chocolate pieces on top represents a design infringement,
while equivalent rectangular chocolate pieces convey a general impression different
enough not to constitute a design infringement. The small, colorful chocolate
pieces on Brynhild’s round chocolate pieces are more pastel colored, and are embossed
with a M, but this is not substantially different from Hval’s “fargepletter” for
the informed user not to confuse the products. The Court of Appeal is of the opinion
that Brynhild’s round chocolate pieces with small colored chocolate pieces on
top could be considered a copy of Hval’s “fargepletter”. Brynhild did launch them
by the same denotation; “fargepletter”, and it took a considerable amount of time
before they stopped the sales/marketingt.
According to the Court of Appeal the name “fargepletter” is however not a trademark
incorporated by use, as Hval claimed, since the word “pletter” is perceived more
as a generic designation of small, round chocolate pieces.
The design infringement gave Hval the right to damages, in accordance with section 40
of the Design Act. Brynhild was sentenced to pay damages to Hval due to loss of
sales revenues in connection with the launching of Brynhild’s round chocolate
pieces (100,000 NOK), expenses for “defensive advertisement” (98,000 NOK), as
well as loss of reputation as shown by e-mails to Hval from customers complaining
about a decreased quality of the “fargepletter” (that really were Brynhild’s chocolate
pieces) (50,000 NOK), and parts of the legal costs.
