TechBlog

Picture the scene. It’s Saturday morning in 1990 and a happy child has just poured himself a bowl of delicious Kellogg’s Ricicles. As he prepares to watch cartoons he cheerily scoops a spoon of Ricicles into his mouth. Imagine the child’s alarm when the Ricicles taste absolutely disgusting! The Ricicles are promptly regurgitated all over the carpet as the child exaggerates his disgust! The child was of course yours truly. So, what was wrong with my usually delicious cereal snack? Was the milk out of date? No. Were the Ricicles out of date? Nope. Was it because the “Ricicles” weren’t actually Ricicles? Bingo!

It turned out that my mum had been experimenting with buying the supermarket’s own brand of “lightly sugared rice cereal”, on the basis that she had been pointlessly paying over the odds for the Ricicles brand and packaging. However I had detected a definite difference in quality (as the carpet could attest), and I think my interest in branding started there and then. How were supermarkets getting away with ripping off branded products? I had to find out and I looked into all the exciting details for a school project. I am reminded of this strange youthful obsession by the news this week that Diageo are issuing proceedings against Sainsbury’s for brand infringement. Diageo is rights holder in Pimm’s, the alcoholic summer drink which can be served with lemonade and fruit. Sainsbury’s has launched a new product called “Pitcher’s”, an, er, alcoholic summer drink which can be served with, um, lemonade and fruit. Diageo are not impressed.

I expect Diageo may found their action on s.10(2) of the Trade Marks Act 1994 (as amended), which prohibits use of similar or identical marks on similar or identical goods or services, where there is a likelihood of confusion on the part of the consumer. Diageo will also probably argue that Sainsbury’s are “passing off” Pitcher’s as Pimm’s. The law of trade marks and the law of passing off deal with the same set of facts in different ways. In instances of trade mark infringement, it is the right to the mark that is being protected. The initial comparison is therefore between the registered mark and the allegedly infringing copy mark. In contrast, in cases of alleged passing off, it is the goodwill or reputation built up through the use of a mark that is protected. By definition, passing off will always involve a wider comparison, not only of the registered mark (if there is one) and the allegedly infringing copy of that mark, but also of all of the other elements of the “get-up” (packaging and presentation) of the respective products in relation to which they are used.

The leading case in the field of “rip-off” supermarket brands is United Biscuits (United Kingdom) Limited v Asda Stores Limited [1997] RPC 513. Asda manufactured its own brand of “Puffin” biscuits in get-up similar to that of the popular biscuit “Penguin”. United Brands sought to restrain production of Puffin biscuits, claiming that Asda had infringed their registered trade marks in realtion to biscuits (the name “Penguin” and various pictorial depictions of penguins). It was held that changes to the pictures of the penguins used on the Penguin biscuit get-up over the years undermined the trade mark infringement claim. The marks hadn’t properly been in use and didn’t deserve protection. In contrast United Brands’ passing off claim was more successful. The “classic trinity” which must be proved in an action for passing-off is: i) reputation in the brand; ii) likelihood of damage to reputation; and iii) misrepresentation as to origin. United Brands clearly proved reputation and likelihood of damage, and the judge considered that the Puffin packaging’s use of a prominent picture of an upright dark coloured sea bird with a white front, in addition to the word “Puffin”, suggested a connection between the manufacturer of the “Puffin” biscuit and the manufacturer of “Penguin”.

Returning to Sainsbury’s and Diageo, and Pitcher’s and Pimm’s, it will be interesting to see what happens. Besides the obvious similarity in the names, Pitcher’s is the same colour as Pimm’s, the get-up is very similar, the serving suggestion (lemonade and fruit) is similar – but would you actually buy Pitcher’s instead of Pimm’s by mistake? Or believe they had been manufactured by the same company?

Who knows, I’m off to p-p-pick up a Puffin* and have a cup of tea.

John D.

*”p-p-pick up a Penguin”, surely? – Tech Blog Ed.