Passing off
Case Note: United Biscuits
(UK) Ltd. v ASDA Stores Ltd
John Lambert
Oct 1997
This case note originally appeared on the Lancaster Buildings website
Over the last few years retailers have begun to place foodstuffs and other products on shelves next to well known brands but under a different name, in similar packaging and usually a few pence cheaper than the well known brand. The unspoken message to the shopper is that he or she can buy much the same product as the well known brand by choosing the retailer's. Why pay more just for a name and packaging? Often but by no means always the manufacturer of the well known brand also manufactures the supermarket product. Manufacturers may object to such marketing but as retailers are their customers there is a limit to what they can do. An occasion when a manufacturer did do something was United Biscuits (UK) Ltd. v ASDA Stores Ltd. (1997) New Law Digest 18th March. The manufacturer of "Penguin" biscuits sued for injunctions to restrain a chain of supermarkets from selling similar chocolate biscuits under the appellation "Puffin".
The plaintiff complained not only of the similarity in the name but also of the colours and style of packaging, the depiction of a sea bird and shelving close to its own products.
Finding for the plaintiff, Robert Walker J applied the principles summarized by the Court of Appeal in Harrods v Harrodian School [1996] RPC 697. Of the three probanda of the so-called "classic trinity" of an action for passing-off, the plaintiff's reputation and the likelihood of damage were clearly shown. As to misrepresentation, he took the view that judicial impression was important where the goods in question were familiar and inexpensive. The packaging would not have been deceptive had it not been for the prominent picture of an upright dark coloured bird with a white front. That picture and the word "Puffin" suggested a connection between the manufacturer of the defendant's biscuit and the manufacturer of "Penguin" even though most consumers might not know the name of that manufacturer. The alternative claim for trade mark infringement was largely unsuccessful and the judge revoked 4 of the pictorial marks for non-use.
