Whiskas’ Not Preferred

In the recent court decision Mars UK Limited v Burgess [2004] EWHC 1912 (Ch) the court assessed the extent of any passing off by a rival cat food manufacturer of the well known WHISKAS brand and product packaging.

Background

It was claimed that the Whiskas brand and packaging had developed since the early 1990s with particular elements remaining constant from that time, which included the colour purple on the packaging. A slogan ‘Eight out of ten cats prefer Whiskas’ was also used.

Early last year Burgess launched its SUPA CAT brand of cat food, which also used the colour purple as well as other colours and indicators. Burgess’ own slogan ‘two out of three cats prefer new Burgess SUPA CAT’ was also incorporated.

Dispute

Mars claimed that the close similarity of the packaging of the cat food product by way of the use of the purple colour would confuse customers as to the origin of the products between Burgess’ Supa Cat and Mars’ Whiskas and / or risks the dilution of Mars’ reputation in its distinctive packaging and get-up, which had been used for many years and at considerable cost. It was also claimed that there existed a close similarity between the two slogans.

Judgement

The court relied on The House of Lords’ judgement in the Advocaat case that clearly sets out the tests for passing off, which includes the requirement that misrepresentation is to be shown.

It found that despite the real possibility that consumers would be drawn to the colour purple (reputation in the colour purple was accepted), they would not as a rule be confused between the two different manufacturers as the purple used on each packaging was a slight variant of the other. In addition the Burgess product get-up included other prominent colours, so as to indicate different flavours and ingredients. The two similar slogans were likely to be read in their entirety thus further delineating between the goods. Moreover, the court was satisfied that the distinctive BURGESS and SUPA CAT indicators were sufficient to distinguish between the two rival products.

All in all the court was satisfied that a reasonably alert consumer could differentiate between the two types of product on offer.Â

During proceedings the court examined documents that were used in Burgess’ design process for its Supa Cat packaging. Despite the evidence demonstrating that Burgess had considered the Whiskas’ get-up and the suggestion that Burgess had designed around the pre-existing design it did not suggest any ‘sinister’ activity.

In respect of the slogans the court equally accepted that each contained sufficient distinctive material that indicated competition rather than association, albeit that there is obvious similarity between the concept of the slogan’s content.

Conclusion

This decision highlights the great difficulty for clients to demonstrate passing off and considering the £20,000 costs award against Mars, the expense of such actions even for preliminary proceedings.

Owners and producers of such goods ought to take account of the following: Â

1. Similar get-up and packaging between rivals will be avoided where distinctive word marks (whether registered or otherwise) are utilised.

2. Rivals may use one another’s get-up in order to design around such packaging sufficiently for differences to be relied upon.

3. Where protection and enforcement is required ensure that the company’s Intellectual Property portfolio is up to date.

 4. Registration of get-up and packaging is possible under the Registered Design rules encouraged under UK and European legislation.

It would seem that rival companies in a bid to save on marketing and advertising will look to closely mimic or even copy another’s product representation. It is therefore imperative for established brands to monitor the activities of its rivals and keep abreast and update their own portfolio to enhance their own market presence.

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