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Store brand packaging similarities may violate trademark

Originally published in AdvocateDaily.com

The similar look of Dollarama’s three store-brand chocolate bars to the well-known Mars, Snickers and Bounty bars could constitute a violation of Mars Inc.’s trademark and copyright, Toronto intellectual property lawyer John Simpson tells Yahoo! Canada Finance.

“The Meteor Bar appears to be an infringement of the Mars trademark and copyright in the artwork and the design. It appears to be a reproduction of a substantial part of their design and I would say the same about the Titan and Island Bar,” says Simpson, principal at Shift Law.

As Simpson explains, Mars Inc. would own trademark rights in the logo of Snickers, Mars and Bounty, and as such, would own exclusive rights to the use of those designs and any similar designs in association with chocolate bars and confections.

“Anyone who uses those designs or confusingly similar designs is infringing on Mars's trademark rights. The company doing that would be anyone making these bars and anyone in the chain of sale.

“Typically, the question of infringement would be determined by survey evidence where people would be asked whether they are at all confused about the packaging to think it has some sort of Mars affiliation,” he adds.

A representative for Dollarama is quoted in the article as saying: “While there are similarities across all such confectionary products, our store-brand chocolate bars are nonetheless distinct from the name-brand ones. They include important differences in terms of identity, name, branding, packaging and price point.”

Simpson says that even if the Dollarama branding was found not to be confusingly similar with the Mars trademarks, Mars would still have some legal rights.

“Section 22 under the trademark act allows those with a trademark to prevent someone from using a design in a manner that is likely to depreciate the value of the good will in a registered mark. This would be a case where the court would say, 'Okay fine, people aren't actually confused, but you're using Meteor in a way that's depreciating the value of the good will in the Mars Bar mark' and that could be a stronger argument in this case,” he explains.

Consumers, Simpson says in the article, are much more likely to be confused when it comes to low-cost purchases such as chocolate bars, as they are often bought in a hurry.

“Dollarama knows a chocolate bar is an impulse buy and they're totally exploiting that,” he says. “If people are looking for a Mars bar, but they see a Meteor Bar the packaging will signal to them that the meteor bar will give them the same feeling. [Dollarama] is piggy-backing on all the goodwill of the Mars trademark for sure.

“This is not the first time something like this has happened. You see this all the time in consumer goods, but the infringement is usually not quite as obvious as it is here,” Simpson says in the article.

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