There is a high probability that you have either tasted, or heard of, Dubai Chocolate. Created in Dubai in 2021 by Fix Dessert Chocolatier co-founder Sarah Hamouda, with the help of chef Nouel Catis Omamalin, this sweet creation is a chocolate bar containing a filling of pistachio and crunchy knafeh, which Fix named “Can’t Get Knafeh of It” in reference to the crispy phyllo found inside the bar.
Since its creation, this sweet treat has exploded in popularity around the world, going viral on social media in 2023 for its unique flavour and texture, with its popularity continuing to increase to this day.
The never-ending demand for all things Dubai-Chocolate related has not only seen well-established organisations such as Lindt Chocolatier, Coco & Bean and Pistachio Gusto make their own version of Dubai chocolates, it has also inspired a wide array of spin-off treats such as Dubai chocolate waffles, crepes, and lattes.
These chocolates and the various derivations can be found across a plethora of businesses, from international brand conglomerates and national supermarket chains, through to chain food and beverage outlets such as Starbucks or Krispy Kremes, as well as your local independently owned food and beverage outlets such as cafes, restaurants and dessert trucks.
Given the global sensation and widespread production and sale of Dubai Chocolate, it is pertinent to wonder?
- Can any singular business or manufacturer claim it as their own and prevent others from using the term; and
- How can a business distinguish and protect itself whilst carving out its own space in a crowded market?
Does anyone currently own the term ‘Dubai Chocolate’” in Australia?
A search on IP Australia indicates that several businesses have applied for trade marks that include the terms Dubai, Dubai Chocolate and Dubai Style, with the majority of these operating in conjunction with a brand or supporting name (as can be seen below).
It is interesting to note that all these filings utilise the term “Dubai Chocolate” or “Dubai Style Chocolate” which implies that exclusive rights to the term ‘Dubai Chocolate’ is not feasible.
Furthermore, it also indicates a widespread application of this term which means that any future trade mark applicants will need to differentiate their trade mark through branding elements such as wording and design, in order to be distinctive enough to be approved.
What if your particular recipe is unique?
Whilst a trade mark protects brand identifiers like names and logos, it does not protect the content of a recipe. Whilst one may be able to register a trade mark for the name of a signature food product (e.g. a Cronut) other parties can still create the product and sell it with a different name.
With regards to Dubai Chocolate, not only is this term considered descriptive and therefore unable to be trade marked, but given the recipe has been shared and replicated so widely since it hit viral status in 2023, it cannot be considered a ‘trade secret’ and be trade marked so is therefore able to be copied by other businesses.
Has the popularity of Dubai Chocolate’s imploded its chance of IP protection?
Registering a trade mark is just the beginning of protecting your intellectual property rights in that trade mark. The trade mark itself must continue to function as a “badge of origin” distinguishing your business and brand in the wider market.
However, what happens when a market offering explodes in popularity, like Dubai Chocolate, giving rise to multiple manufacturers and derivative products?
Whilst creating a strong and identifiable brand is beneficial for business, sometimes achieving mass brand recognition can backfire.
Trade mark genericide, is what happens when a term is used to identify a category of goods or services, instead of the source of the goods or services. Examples of this include aspirin, escalator, cellophane and yo-yo.
When this occurs and the trade mark outgrows the constraints of traditional trade mark protection, the consequences can be quite significant and include loss of: exclusivity, identity, IP rights, value and sales.
Whilst Dubai Chocolate has not experienced a decline in value or sales, it can be surmised that the term itself has surged in popularity so much and been so widely adopted by both businesses and consumers that it has taken on a wider and more generic meaning.
This can be seen through its application across Dubai Chocolate cups, shakes, desserts and more, indicating that the term itself is now a generic reference to a ‘chocolate with pistachio and crunchy knafeh filling’ or something that is created with these components in another form.
This reference, which is not tied to the products of a single company, indicates that no business will be able to own and monopolise the term as it is in widespread use and functions as a reference to a generic category of chocolate rather than a unique brand and therefore can be used by any business operating in the market.
Given no singular business or manufacturer can claim Dubai Chocolate as their own and prevent others from using the term, we need to address the important question: How can a business distinguish and protect itself whilst carving out its own space in a crowded market?
How can a business distinguish and protect itself whilst carving out its own space in a crowded market?
In an ever-increasingly crowded market space, how can a business distinguish themselves and carve out their own space in this market? Whilst we explore Dubai Chocolate as an example, the same question can be applied to any fast growing or large sector in Australia such as Health Care, Electricity, Software, Construction and more.
One of the most effective ways to distinguish and protect your business and brand is to trade mark the logo, appearance or packaging of your market offering. Building and protecting a distinctive brand in the market will enable a business to carve out their own space and differentiate themselves in a crowded market space.
It’s integral to appreciate that branding is more than just colours, fonts and logos. Branding is the public face of your business and needs to be protected as it represents what your business stands for and is a visual representation of your history and purpose: it IS the embodiment of your business.
While viral success invites imitation, branding is more than just registering trademarks. In the case of Dubai Chocolate, the original creators FIX may not be able to stop others from making “Dubai-style” chocolate bars, but they can continue to celebrate their brand, innovate new flavours, and stay visible in the public consciousness through a strong brand presence.
A well-defined brand doesn’t just help your marketing, it is an asset that streamlines communications, helps you gain market visibility and can add value to your products, staff, balance sheet and share price. Given the intangible value of your branding, it truly is another form of intellectual property. Therefore, branding also needs to be properly defined, maintained and used by your business to optimise your market position and value.
If your business and branding assets are public, unique or integral to your point of difference, it is worth registering these assets to solidify your business positioning and competitive advantage as well as prevent others from replicating your identity for their own benefit.
Are you ready to take a few steps today to protect your tomorrow? Contact our team to find out how we can help safeguard your brand, business and wealth.