United Biscuits has won its landmark ’passing off’ case against
Asda over the similarity of its McVitie’s Penguin biscuits to the
retailer’s Puffin bars - the first time that a manufacturer has taken a
retailer to court over a lookalike product.
The High Court found that the packaging of Asda’s Puffin, its colour,
typography and use of the Puffin character, was ’deceptively similar’ to
that of Penguin.
But, in a further example of the lack of clear direction offered by the
legal system over lookalikes, UB lost its claim that the Puffin name
alone infringed Penguin’s registered trade mark.
Asda said it intends to continue to sell its biscuits under the Puffin
name, although it will have to alter other elements of the
Asda must pay UB’s costs, said to be over pounds 100,000, plus damages,
which have yet to be decided.
The question of how great the changes in packaging will have to be was
confused further by the judge’s refusal to be drawn on what alterations
Mr Justice Walker told Asda’s lawyers: ’Your clients have been living
dangerously and I don’t think the court should bend over backwards to
tell them how dangerously they can live in the future.’
A spokeswoman for UB, owner of the McVitie’s Penguin brand, said: ’We
will continue to defend our brands and if we feel that the revised
design still infringes Penguin’s trade mark we will consider our
John Noble, chairman of the British Brands Group, said: ’This
double-edged judgment demonstrates the need for effective legislation
over the lookalikes issue. Although it is reassuring that the courts
recognise the need to protect the assets of a brand, that protection is
The judge granted Asda a stay of execution of 21 days, pending appeal,
during which time it can continue to use the current design.