Asda must change the packaging of its Puffin chocolate biscuits after Penguin brand owner United Biscuits won a partial victory in the High Court.
The supermarket has five weeks to clear its shelves of 350 000 worth of Puffin biscuits.
Mr Justice Robert Walker ruled that Asda has been passing off Puffin as a McVitie’s product. McVitie’s is owned by United Biscuits.
United Biscuits was successful in its non-statutory claim of “passing off”, but unsuccessful in a statutory claim of trademark infringement.
After a successful counterclaim by Asda, four registered Penguin trademarks not used since 1988 are revoked.
While the judgement prevents Asda using the current “get up” of packaging, it does not prevent it using the Puffin name, which is likely to be retained.
Both parties agreed to a 35 day stay of execution of the resulting injunction, avoiding lost sales for Asda.
Mr Justice Walker told Iain Purvis, representing Asda: “I feel that your clients have been living dangerously in the past.”
It is thought that Asda is preparing to appeal.
See News Analysis, page 8.