Does ‘Dubai Chocolate’ have to come from Dubai?
For several months now, products known as “Dubai chocolate” have been conquering the food market. A 200g bar of the original product can cost up to approx. EUR 41,80 [1]. There are also cheaper versions. In terms of quality, they can compete with the original. However, whether they should be called ‘Dubai chocolate’ is not clear.
Some facts
According to Wikipedia, Dubai chocolate is a chocolate bar filled with pistachio cream, kataifi pastry and tahini paste. It was first produced by Fix Dessert Chocolatier in Dubai in 2022 under the name Can’t Get Knafeh of It.[2] Sara Hamouda is the founder of the company and the originator of creating a chocolate with this composition. The idea of combining the flavors of the Middle East with chocolate apparently came to her when she was pregnant. At the time, she was craving more than just chocolate. The product did not become popular immediately after its launch. It only did so with the help of culinary influencer Maria Vehera, who released a reel showing her indulging in the product.
Replicating the recipe
Many confectioners, riding the wave of success of Can’t Get Knafeh of It, have decided to launch their own chocolates using the same ingredients as the original. From a legal point of view (at least according to Polish law), there are no obstacles to do so. This is because a culinary recipe, as a specific procedure, method or rule of operation, is not protected as a work under copyright law.
The subject matter of the copyright law is each manifestation of creative activity of individual nature, determined in any form, regardless of its value, purpose, and manner of expression (a work). Protection applies only to the manner of expression. No protection is granted to discoveries, ideas, procedures, methods and principles of operation or mathematical concepts [Article 1 of the Act of 4 February 1994 on Copyright and Related Rights].
Copyright protection also does not apply to taste, as the Court of Justice of the European Union unequivocally stated in its judgment of 13 November 2018. (C-310/170, Levola hengelo BV v. Smilde Foods BV). According to the ECJ, the work must be identifiable with sufficient precision and objectivity, which is not possible in the case of the taste of a food product. This is because the identification of the taste is based on taste sensations and experiences that are subjective and variable. They depend, inter alia, on attributes or factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed.
Where does the name ‘Dubai chocolate’ come from?
Dubai chocolate’ is not the name that appears on the packaging of Can’t Get Knafeh of It chocolate. Nor was the term initially used by the creators of the brand. Sara Hamouda explained in an interview that it was internet users who started using it. When videos of a chocolate bar from Fix Dessert Chocolatier went viral, people asked questions like ‘where did you get it’ and ‘where can I get it’. The answer was, in truth: “In Dubai”, because that was indeed the only place you could get it. So Can’t Get Knafeh of It chocolate became known as ‘Dubai chocolate’. The term is now being eagerly used by other confectioners. The answer to the question of whether they can do so is not clear, although the rulings so far (as discussed below) have been in their favour.
Lawsuits against Lidl and Aldi chains
Dubai chocolate has been added to the range of products offered by popular supermarket chains Lidl and Aldi. Andreas Wilmers, the exclusive distributor of Can’t Get Knafeh of It chocolate for the European market, has filed lawsuits in Germany against both companies for unauthorized use of the name. He claimed in the lawsuits that the use of the name “Dubai Chocolate” for products that are not made in Dubai misleads consumers as to their true origin (thus constituting an act of unfair competition).
An act of unfair competition shall be the identification of products or services or lack thereof which is likely to mislead customers as to the origin, quantity, quality, components, method of manufacture, usefulness, applicability, repair, maintenance or other material qualities of products or services, or the concealing of the risks involved in their use. [Article 10 of the Act of 16 April 1993 on combating unfair competition].
The cases brought by Wilmers were heard by a court in Cologne (the case against Aldi) and a court in Frankfurt am Main (the case against Lidl). Initially, the Cologne court found that the use of the name “Dubai chocolate” for a product that was actually produced in Turkey was misleading. However, following an appeal brought by Aldi, another chamber of that court overturned the previous decision and took a radically different stance. The Frankfurt am Main court also found that the name ‘Dubai chocolate’ was not misleading. In its statement of reasons, the court said that the adjective ‘Dubai’ had become common and referred to a style or recipe rather than a place of origin. According to the court, consumers who buy Dubai chocolate do not assume that it is made in Dubai, but rather expect it to be made in a way that is specific to the region, using ingredients that are unique to the culture and traditions of the Middle East (pistachios, dates, spices that are characteristic of Arabic cuisine). Despite the court rulings, many confectioners are becoming increasingly cautious about using the name ‘Dubai chocolate’ and are stating on their packaging that their product is ‘Dubai-style chocolate’ rather than ‘Dubai chocolate’.
The average consumer’s point of view is crucial
It is beyond doubt that the name ‘Dubai chocolate’ is not a protected geographical indication (such an indication protects the name of a product which owes its specific characteristics and/or reputation to its geographical origin). It is difficult to attribute specific characteristics to chocolate from Dubai as a result of its origin. However, contrary to the rulings of the German courts, in my opinion, the claim that there are many consumers who, when buying “Dubai chocolate”, are convinced that it comes from Dubai or contains ingredients directly from Dubai, can be substantiated. From my observations, the term ‘Dubai chocolate’ is identified with a particular style or recipe mainly by internet users who actively use social media. Consumers who are not familiar with the background of Dubai chocolate tend to believe that it comes from Dubai. It is therefore crucial to decide which group can be considered the ‘average consumer’. This is because it is from the perspective of the average consumer that the likelihood of misrepresentation must be assessed.
If we consider the average consumer to be the group that perceives Dubai chocolate as a recipe, then using this name to describe products that do not originate in Dubai will not be misleading. However, if it turns out that the average consumer identifies it with the origin, then using the name “Dubai chocolate” to call a product that has no direct connection to Dubai would be an act of unfair competition. It is possible that the understanding of the term ‘Dubai chocolate’ will become more consistent if the popularity of the pistachio chocolate remains at its current level. However, bearing in mind that every internet trend comes to an end, this will not necessarily happen and chocolates that are popular today will disappear from shop shelves (or will be far fewer in number).
What is the position of the Polish courts?
At the moment there is no information about cases concerning the use of the name ‘Dubai chocolate’ before Polish courts. The only decisions regarding products with this name have been the result of trade inspections and have been related to inadequate labelling of the product composition (lack of information on all allergens). However, it can be expected that if a Polish court were to decide a case similar to those in Germany, the rulings would probably be similar to those of the Cologne and Frankfurt am Main courts. On the other hand, it cannot be excluded that the court would take a different stance, having considered the case from the perspective of the average Polish consumer.
Please feel free to contact me if you would like to discuss the legal intricacies of your product names and how to protect them.
[1]https://www.empik.com/oryginalna-dubajska-czekolada-fix-can-t-get-knafeh-of-it-hero-fix-dessert-chocolatier-inna-marka,p1587177909,dziecko-p?utm_source=chatgpt.com
[2] https://pl.wikipedia.org/wiki/Czekolada_dubajska
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