From fiction to real life trademark: WONKA versus WONKITOS

Wonka has been a household name for decades.

The brand originates from Charlie and the Chocolate Factory by Roald Dahl, where Willy Wonka is portrayed as the eccentric chocolatier behind a wondrous candy factory. What began as a fictional character in a children's book grew through films and merchandising into a chocolate brand now owned by a subsidiary of Ferrero.

Wonka is not unique in this respect. Other fictional brands from films and television series have also made the transition into the real world. Consider Duff Beer from The Simpsons, which is now used as a trademark for beer in several countries. Another example is Bubba Gump Shrimp Co. from Forrest Gump: in the film a shrimp fishing company, yet today it operates as an international chain of seafood restaurants.

Once a name no longer distinguishes only fictional products but also real products on the shelf, the need for trademark protection arises. Registration then becomes a strategic tool to secure exclusive rights and control who may use the name. Especially with an attractive concept, there are often opportunists looking to benefit from the fame of the fictional brand.

The value of trademark registration became clear recently when opposition was filed against the European application WONKITOS based on the existing WONKA trademark. A Spanish company sought to register this mark for a range of food products. Ferrero opposed the application on the basis of its earlier WONKA trademark. The Opposition Division of the European Union Intellectual Property Office (EUIPO) largely sided with Ferrero. For products such as chocolate, ice cream and confectionery, a likelihood of confusion was found. The shared initial “WONK” was considered significant, particularly because consumers often remember the beginning of a trademark.

Interestingly, the EUIPO did not consider it decisive whether WONKA is recognized as a reference to Willy Wonka. The trademark owner had likely raised this argument to demonstrate that the mark has above-average distinctiveness. The evidence submitted, however, did not convince the office.

Nevertheless, effective action could be taken against WONKITOS, resulting in a successful outcome for WONKA.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.