Anyone who has been on social media platforms such as Instagram or Tik Tok over the last few days will have noticed the latest viral craze: the so-called “Dubai chocolate”. This is a chocolate bar filled with kadaifi (angel hair) and pistachios, regularly costing over €10, far above the usual retail price of chocolate. Whether the hype surrounding this confectionery, which originally comes from the Emirate of the same name, is justified in terms of taste remains to be seen. Whatever your taste preferences are, Dubai chocolate is causing a nationwide stir in terms of trade mark law:
A search in the register of the German Patent and Trade Mark Office, GPTO, shows that several interested parties in Germany already want to make the success of the trendy sweet their own and have registered the term “Dubai Schokolade” as a trade mark. The term is yet to be registered. The decisive question in the GPTO’s examination procedure will be whether “Dubai Schokolade” can be legally protected as a trade mark at all! According to Section 3 (1) MarkenG (German Trade Mark Act): all signs, in particular words including personal names, designs, letters, numerals, sounds, three-dimensional designs including the shape of goods or of their packaging and other get-ups including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trade marks. However, trade marks which are devoid of any distinctive character, i.e. which are not capable of distinguishing the goods or services of one undertaking from those of other undertakings, are excluded from registration (Section 8 (2) No. 1 MarkenG), as are trade marks which consist exclusively of signs or indications which may serve in trade to designate the characteristics of the goods or services, i.e. which are purely descriptive (Section 8 (2) No. 2 MarkenG). Trade marks which are likely to deceive the public as to the nature, quality or geographical origin of the goods or services are also excluded from registration (Section 8 (2) No. 4 MarkenG).
The term “Dubai Schokolade” clearly comprises the term “Dubai”, a geographical indication, on the one hand, and “Schokolade”, a generic term, on the other. The GPTO could therefore decide that the term lacks specific distinctiveness, as the consumer does not associate a specific company with it; furthermore, the Office could argue that the term needs to be kept free. Finally, the term could be considered misleading if the chocolate does not actually come from Dubai.
Disputes over the potentially lucrative term already arose a step earlier: according to media reports, Alina Wilmers GmbH stated that it was the only company allowed to export the “original” Dubai chocolate of the “Fex Dessert” brand to Germany and issued a warning to Lindt & Sprüngli GmbH, among others, with reference to Section 127 MarkenG and demanded that they cease and desist. According to Section 127 (1) MarkenG, geographical indications of source (Section 126 MarkenG) may not be used in the course of trade for goods or services which do not originate from the place, region, territory or country designated by the geographical indication of source if the use of such names, indications or signs for goods or services of a different origin is likely to mislead as to their geographical origin. Putting it simply: geographical indications may not be used for goods that do not actually have the given geographical origin. Since the chocolate from Lindt does not come from Dubai, the designation of this as “Dubai chocolate” could mislead consumers. Lindt & Sprüngli GmbH is said to have argued that the term in dispute is a generic term that does not refer to the origin of the product, but to the method of preparation. Aldi and Lidl are also said to be in receipt of warnings from Alina Wilmers GmbH.
Ultimately, the answer to this legal question depends on the perception of the market. If the consumer assumes when purchasing the chocolate that the chocolate comes from Dubai, it may be misleading if the chocolate actually has a different origin. The indication “Dubai chocolate” is then to be regarded as a geographical indication of origin, as is the case with champagne for example. If, on the other hand, the relevant public is aware that the term “Dubai chocolate” merely refers to a specific type of preparation, they will recognize it as a purely generic term - similar to the popular Wiener Schnitzel.
What is your perception of “Dubai chocolate”? Is it a sparkling wine or a tasty meal?!
