Doh! Krispy Kreme's new doughnut a no-no

20 July 2009
Krispy Kreme’s decision to “put a smile on the faces of our customers” by paying homage to an iconic Australian biscuit has caused more than a few frowns at Arnott’s.  Amanda Griffiths explains.

The biscuit versus the doughnut

Arnott’s Iced VoVo biscuit has been a long-time favourite of Australians. The biscuit, covered with striped pink icing and raspberry jam and sprinkled with coconut, was even mentioned during the 2007 election victory speech with Prime Minister Kevin Rudd urging his team to have an Iced VoVo before going to work.

Krispy Kreme recently launched its Fair Dinkum Doughnuts promotion aimed at honouring favourite Australian foods.  Part of the range is the Iced Dough-Vo doughnut which is topped with pink icing, covered with sprinkles, and filled with raspberry jam.

Arnott’s wrote to Krispy Kreme threatening legal action if it did not rename its Iced Dough-Vo product. Arnott’s was concerned about the similarity of both the name and appearance to its Iced VoVo product, adding that it had been using the trade marks Vo-Vo, Iced Vo-Vo and Iced VoVo for biscuits since 1906 when the mark Vo-Vo was first registered.

Initially, Krispy Kreme said that after taking legal advice it would continue promoting and selling the doughnuts. Krispy Kreme Australia CEO John McGuigan said, “The word iced is pretty well used, and the word dough I don’t think has got anything to do with what Arnott’s do, and the word ‘vo’, I’m not sure what it means, but it goes well with dough.”  However, the dispute has now ended with the doughnut company changing the name of the product to Pink Iced Bobby Dazzler.


Avoid forking out the dough

While Krispy Kreme has walked away with only a smidge of icing on its face -  in fact, some would argue that it has been a great PR opportunity for both companies - the dispute does serve as a warning to the industry. 

Promoting products by invoking nostalgia is a common marketing tool.  However, care should always be taken when referring to a traditional or popular product that is not your own. 

To avoid infringing activity and paying compensation, the following questions should always be asked before launching a new product:

  • Is your trade mark identical or similar to a mark registered by another business, on products that are identical or similar?  If so, you could be liable for trade mark infringement.
  • Does your trade mark look or sound similar to another business’ mark, or are you using packaging or advertising that is similar to another business’?  If so, your actions could constitute misleading and deceptive conduct which can give the other business grounds to sue under the Fair Trading Act.
  • Finally, are you representing your product to consumers as if it were a product of another business?  If so, you may be liable for passing off.


Keeping these considerations in mind can prevent costly legal proceedings and other avoidable situations, such as an expensive re-branding exercise.

As the Iced Dough-Vo doughnut situation demonstrates, imitation is not always seen as the greatest form of flattery.

An edited version of this article was published in FMCG, July 2009.

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