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File this one under the sweet taste of victory. Kraft Canada is the exclusive importer of the Toblerone chocolate bar in Canada. This confectionery has been marketed and sold in Canada continuously since 1910 (except for the war years). The product's triangular shape, its sectioned "peaks," and the packaged cardboard box in an off yellow-colour with stylized fonts, have all acquired a certain distinctiveness in the marketplace over the years.

In September 1997, Hagemeyer Canada Inc. decided to bring out its own chocolate bar, calling it "Alperhorn." The trademark to that point had been applied to their dairy products. The Alperhorn bar is the same size and shape as the Toblerone, with sectioned peaks, the Alperhorn contains the same ingredients (honey, nougat, etc.) and the packaging and fonts employed were almost the same as Toblerone.

Kraft sent a demand letter to Hagemeyer to cease and desist in the passing off of their product as a Toblerone. Hagemeyer replied that it would not be complying with the demands of Kraft. Hagemeyer soon landed in court.

As an aside, Toblerone sells its chocolate bars in "theme packaging" for gift giving on Easter and Valentine's Day. From the evidence, Toblerone learned that Hagemeyer intended to sell its chocolate bar using a similar theme.

The Ontario court hearing the matter began by looking at the legal test for "passing off," stating that the test is one of "source confusion"--would the public upon seeing both products side-by-side in the market be confused into thinking they were sold by the same manufacturer. An important legal precedent in this regard was established in 1992 by the Supreme Court of Canada when it said: "a man is not to sell his own goods under the pretense that they are the goods of another man...".

Obviously, the similar get-up of the two products was pivotal to the court's analysis. How does the law define this odd word, "get-up?" The late Harold Fox, one of Canada's leading intellectual property law scholars, said the concept of "get-up" was comprised of elements such as the shape, size, colour, wrapper and adornment which a trader endows their product with, saying: "a container such as a bottle may be part of the get-up of the goods...if it is of a peculiar shape that catches the eye and is retained in the memory...and is associated in the mind...with the goods of that particular trader alone...".

With that definition in mind, the Court had little difficulty in concluding that Hagemeyer was passing off its product as a Toblerone despite different brand names associated with the two products.

The judge awarded a permanent injunction restraining Hagemeyer from selling any chocolate confectionery product employing a "peaks" design or in triangular packaging. Hagemeyer was also ordered to deliver all product in its inventory to Kraft, and destroy all advertising and package materials. Finally, Hagemeyer was ordered to recall all inventory in the marketplace.

The case also has an important lesson for those conducting marketing research. Each side in this case produced as evidence the results of marketing research studies. The Toblerone market researcher asked this question after showing the Alperhorn product: "which company do you believe puts out the brand of chocolate product you just saw?"

The Hagemeyer market researcher asked this question: "looking at these (point to Alperhorn display) do you think the Alperhorn bar is an actual Toblerone bar, or do you have an opinion."

The judge first discounted the Hagemeyer market research because "the question had some built in direction" through the use of the words "is an actual." However, this was a minor point compared to a more serious flaw that the judge saw in the Hagemeyer market research.

The judge rejected the Hagemeyer market research because it measured the wrong thing, that being "product confusion." As noted above, the legal test in a passing off action is "source confusion." A real learning point that market researchers can pick up from this case is in relation to the focus of legally oriented market research. In a nutshell, a rule of thumb that researchers should try to keep in the back of their minds as they structure their research strategy is that one of the most important questions to test is the actual legal test that a judge will apply.