It brought a case in a district court in Pennsylvania, calling on LBB Imports to stop importing Toffee Crisp, Yorkie, Maltesers, Cadbury, Kit Kat and Rolo into the US. It claimed the products infringed Hershey’s trademarks on Reese’s, York, Malteser, Cadbury and Rolo.
“In particular, the imported Toffee Crisp product sold by LBB closely resembles the well-known Reese’s trade dress that is protected by a number of federal trademark registrations: among other things, both have the same orange background color, and both feature a slanted yellow font with brown outlining,” said Hershey in its filing.
Hershey is also seeking damages and an injunction to stop LBB Imports bringing in Kit Kat, Rolo and Cadbury products that are manufactured by the original producers, Nestlé and Mondelēz.
Hershey manufactures Kit Kat and Rolo under license from Nestlé, as well as some of Mondelēz International’s Cadbury products such as Dairy Milk and Creme Egg. It holds US trademarks for each of these brands.
We asked Hershey why it didn't ask Nestle and Mondelēz to talk to their customer to ensure these products were not brought in to the US.
"This is a case of illegal grey marketing and we do not know LBB's sources for acquiring these products. The most effective way to stop these infringing imports is to directly confront the infringing party," said Jeff Beckman, director of corporate communications at Hershey.
Malteser turf wars
Hershey also hopes to block LBB from importing Mars’ Maltesers into the US.
Hershey produces its own Malteser brand and holds a US trademark for ‘Malteser’. In April this year, Mars, which produces Maltesers - with an ‘s’ - brought a court case against Hershey in Virginia, accusing it of passing off products as Mars’ Maltesers.
"Hershey clearly owns the Malteser trademark in the United States and has owned the mark for 17 years. Malteser been a U.S. trademark since the 1960s when the Leaf company first registered the mark long before we acquired it," said Beckman.
York versus Yorkie
In the current case, Hershey also accused LBB imports of infringing its trademark on peppermint pattie brand ‘York’ by importing Nestlé’s Yorkie. It claimed that the names were similar enough to cause confusion among consumers.
"We own York trademark name for any type of confection in the United States. Any confection with that name or a confusingly similar name is a simply an infringement of our registered trademark," said Beckman.
Hershey added in its court filing: “What is more, defendant continues to import and sell the Infringing Products, despite previously admitting that its actions infringed Hershey’s trademark rights and repeatedly agreeing to stop its infringing conduct."
We asked LBB Imports if it plans to fight the case and are awaiting a response.
Hershey has called for a jury trial to decide the case.