Penguin forces Asda redesign

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.

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

packaging.



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

were acceptable.



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

position.’



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

still confused.’



The judge granted Asda a stay of execution of 21 days, pending appeal,

during which time it can continue to use the current design.



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