Brands to take heart from Penguin’s copycat victory

Despite Asda’s brave face, the Penguins came out of court smiling. The result may encourage more brand owners to take packaging copycats to the courts, reports Matthew Valentine

BRAND owners won a victory against supermarket copycats this week, with the judgement that United Biscuits has been successful in its High Court claim that Asda was passing off its Puffin biscuits as Penguins.

But the result of the closely fought battle is unlikely to see an end to copycat packaging cases.

The ruling centred not on the name Puffin, rather on the general “get up” of the packaging. Asda must now change its Puffin design, originally created by Ian Logan Design (where lips remained sealed this week).

The supermarket will not be drawn on what form its changes will take or who will do them, but it insists that the Puffin name will continue to be used.

Asda could not confirm whether it would appeal, but the retailer already has a date for the courts again on 23 June. This time, the chain will be defending itself against IDV, the spirits division of Grand Metropolitan, which is making similar claims about four ranges of drinks.

Mr Justice Robert Walker appeared to allude to this in the Puffin case. As he said to Asda’s counsel: “I do feel that your clients have been living dangerously in the past… you don’t have to bend over backwards to realise that they could be living dangerously again in the future.”

Although both Asda and United Biscuits are claiming victory, the judgement will encourage other brand owners, and perhaps designers, to consider similar actions against companies they believe are passing off products. And it may lead to more caution in the briefs given to own-brand packaging designers working for the major supermarket groups.

Pauline Amphlett, director of intellectual property at DDg Brand Guardians, says that the result is important because it “shows a brand owner is willing to run with it” when the stakes are high enough. And the stakes in this case were certainly high: gross sales of Penguin biscuits are “in excess of 30m” every year, according to evidence presented in court.

But Amphlett queries the effect that such cases have on long-term retailer/supplier relationships. The fact that United Biscuits backed Asda’s request for a five-week stay of execution, when Mr Justice Robert Walker was proposing just 21 days, could be seen as a small peace offering.

And Amphlett is not alone in pointing out that the case was an especially difficult one to rule upon. Jonathan Sands, managing director of Leeds consultancy Elmwood, which works on packaging design for brands and Asda’s own-brands, says: “I think both sides in this case are right. It is important that when you create brands and invest heavily in building them, the law should give you some protection. But I am a great fan of Asda’s stance in being the people’s champion.

“Brand manufacturers get too twitchy about me-toos. They are a compliment. For Puffins to survive, then Penguins must survive.”

Sands says the case appears to have set some limits on how me-too packaging can be designed: “This case has set some boundaries and some rules. Tesco and Sainsbury’s ought to be grateful to Asda for letting everybody know how far they can go.”

But Campbell Laird, managing director of specialist brand packaging consultancy The Branding Iron, says that the judgement is long overdue: “Had this not happened I think it would have been quite a sad day. It would have opened the doors and let them [the supermarkets] go for it.”

Stephen Groom, intellectual property specialist with solicitor Lewis Silkin, says the Puffin saga is the first time since the Sainsbury’s Classic Cola case that there has been “a fully reasoned judgement in this general area”.

And he feels that, although closely fought, the judgement provides a clear victory for United Biscuits which may inspire other brand owners to launch similar actions: “I think this will give fresh impetus to people who want to run passing-off cases.”

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