A small Welsh retailer, Sweet 66, and its owner have been found guilty of trade mark infringement offences by selling Wonka branded chocolate bars. Wonka, of course is the name of the fictional chocolate factory owner from British author Roald Dahl’s children’s classic novel, “Charlie and the Chocolate Factory.” In the story, Wonka hosted a competition, awarding a much coveted trip to his mysterious factory to the five children who found a golden ticket hidden in their chocolate Wonka bars. Wonka also happens to be a trade mark, owned by Nestlé, registered in respect of chocolate products and confectionary. UK Trade mark registration nos. EU007049265; EU004404828. The guilty Wonka Bar trader had been buying cheap supermarket ‘own brand’ chocolate and repackaging it under “Mr Wonka Bar” labeling. Sweet66 also inflated the price by a factor of 10, selling 30 pence supermarket chocolate bars for £3.00. Trading Standards News Item; Torfaen County Borough Posting.

Infringer held criminally liable

The Torfaen Trading Standards service (the local government agency tasked with enforcing legislation regulating the supply of good and services) investigated Sweet 66’s operation which led to the criminal prosecution. The interesting point in this case is that the trader was found criminally liable for trade mark infringement despite the fact that Nestlé had not been selling Wonka bars in the UK for some considerable time (although incidentally, Nestlé has announced that it is reviving its Wonka products this year). Aug. 9, 2013 Press Release. The chocolate bar also had no identification of origin in contravention of UK consumer protection law. Although criminal trade mark offences provisions in the UK are targeted at counterfeiters, there is no requirement that the perpetrators have any dishonest intent. The provision is fulfilled if the defendant deals in goods which bear a sign identical to, or likely to be mistaken for, a registered trade mark with a “view to gain for himself… or with intent to cause loss to another”. The scope of the provision is relatively wide and where an identical mark is used on identical goods (as here), there is no need to prove any form of confusion or deception. Trade Marks Act 1994, S92 – Unauthorised use of a trade mark.

Commentary

It may be that the present case was mounted against the defendants primarily to protect consumers, the trader also being in breach of a number of aspects of consumer protection legislation – for one, the offending chocolate bars intimated that a winning “golden ticket” may be inside, when there was no competition of any sort. In any event, although criminal proceedings for trade mark infringement are relatively rare, one should bear in mind that the criminal law can be the right tool against, for example, unscrupulous small traders who are engaging in unfair practice. A similar case was also instituted by the trading standards service in Manchester, after being prompted by a disappointed boy who found a worthless golden ticket in fake Wonka bars. The company responsible, Kirkcrown Ltd, was fined and had the offending Wonka bars seized. Nov. 18, 2013 Manchester News.

This article was prepared by Seiko Hidaka (seiko.hidaka@nortonrosefulbright.com / +44 20 7444 2432) of Norton Rose Fulbright’s United Kingdom’s Intellectual property disputes group.