After a quiet while on the “own brand lookalike” front, comes the recent Walkers Sensations/Tesco Temptations set-to.
Topic: Brands
Who: Walkers Snacks and Tesco
When: February 2003
Where: UK
What happened:
Walkers Snacks was reported to be incandescent about Tesco's recent launch of its "Temptations" up-market crisp range. Getting on for a year previously, Walkers felt it was time to move into the up-market snack sector pioneered by brands such as Phileas Fogg. Walkers launched a variety of "specially prepared crunchier crisps in a range of indulgent flavours" under the "Sensations" banner. Interestingly, however, they do not appear, up until now at any rate, to have even attempted to register "Sensations" as a trademark in the UK. Perhaps they were put off by Thorntons' registration of exactly the same mark in respect of chocolates, Mars' registration of Temptations in respect of "foodstuffs for animals," and Phalcon Surgical Supplies' "Temptations" registration in respect of lingerie.
Each product had a tantalising flavour descriptor such as "Sea salt and cracked black pepper" and "Thai sweet chilli," and pack graphics featuring a monochrome pastoral potato field shot and a colour close up of the relevant flavourings. It is also interesting to see that although they may not have applied to register "Sensations" as a trademark, Walkers have put the initials "TM" against the brand on the pack. This is a device used where a brand may not yet be a registered trademark, but brand owners want to flag up to the rest of the world that they do regard it as their property. No official registration or authorisation is required before doing this and it is often quite surprising how few brand owners actually deploy this useful tactic.
Tesco's recently launched "Temptations" brand used the same or very similar flavour descriptors such as "Sea salt and cracked black pepper". It also came in a size, shape and ambient off-white which was exactly the same as the Sensations pack and a price which undercut the Walkers product by around 20p at around 95p.
The Tesco brand appears prominently on the pack as does the Walkers logo on the Sensations pack, but there are other similarities. These include the use of a black and white pastoral potato field shot, though slightly larger and at the bottom of the pack instead of towards the top, with a rather more blurred tractor and what appears to be a trailer containing freshly gathered potatoes as opposed to a basket of spuds in the Walkers pack. Colour shots of the flavourings also feature, though slightly smaller and in the case of the "Sea salt and cracked black pepper" product, the pepper and salt appear in separate panels as opposed to in one combined shot.
It has been reported that Tesco take a robust position in respect of the Walkers complaints, saying that Tesco continue, so far as Tesco is concerned, to comply with the Institute of Grocery Distribution guidelines on packaging and trade dress. Walkers clearly take a different view, but recent reports indicate that they will not necessarily be taking the matter further than a shot across Tesco's bows.
Why this matters:
It has been some years now since the last high profile spats over "own brand" look-alikes. However, as calls from bodies such as the British Brands Group for special legislation in this area have gone unanswered, the law remains the same. Essentially this means that in cases like this where there are no registered trademarks or designs in issue, Walkers would only have a case in law if they could establish either copyright infringement or passing off.
On copyright there are two possible issues. Firstly whether any of the individual photographs on the Sensations pack has been substantially copied by a similar photograph on the Tesco pack. Secondly there is a possible question as to whether the overall frontage of the Walkers pack as a graphic work, incorporating the text and pictures, could be said to be a separate composite copyright work which was infringed by the equivalent combination of images and wording on the front of the Tesco pack.
On the latter point, there is doubt as to how strongly this argument could be run. The Copyright, Designs and Patents Act 1988 recognises that there can be a "compilation" copyright in a collection of literary works, but does not expressly confer similar protection on a combination of artistic works. It does, however, protect "graphic works" and "collages" as artistic works, and Walkers might also derive some comfort from the apparent acceptance that the combination of material on a magazine cover could be copyright protected in a copyright infringement case brought by IPC, publishers of "Woman" magazine, against Mirror Group Newspapers in 1998 over the latter's TV ad featuring the cover of an issue of Woman ([1998] FSR 431-448).
Whatever the correct position here, the basic test to apply is whether the Tesco content can be said to be a copy of a substantial part (in quality terms) of the equivalent content on the front of the Walkers pack. The answer to this, one imagines on any view, has to be that there is simply not sufficient similarity to give Tesco anything more than a small chance of succeeding in any litigation it might choose to initiate. Similar concepts and approaches may have been adopted, but the ways in which these have been articulated and visualised in the Temptations pack is likely to be regarded as sufficiently distanced from the Walkers material not to infringe.
On passing off, this is a notoriously difficult tort to establish. Here Walkers would have to show that their brand name and pack design had become sufficiently established in the marketplace to be distinctive of products coming only from the Walkers stable. This might be difficult given that their product has only been around for just under a year.
Even if they succeeded on this point they would then have to establish that as a result of the similar pack size, not completely dissimilar brand names, similar imagery and, background colouring and flavour descriptors, the Tesco product amounted to a "misrepresentation". The most likely "misrepresentation" argued here (particularly given that these products appear next to eachother on Tesco shelves, as they did when marketinglaw purchased packs of each on 12 February 2003) would be that the Tesco product came from Walkers.
Even if they succeeded on this point, Walkers would have to go on to establish that as a result of all this, Walkers would lose sales.
Marketinglaw's own assessment is that the Tesco branding and pack design process has clearly had enormous legal input and, as a result, has been cleverly shifted to a point which is just sufficiently removed from the visual territory occupied by Sensations to give Walkers very little chance of legal success.
Another take on the whole picture came from Richard Murray of Williams Murray Hamm in a recent issue of Marketing. Richard suggests that Walkers have only themselves to blame by opting for prosaic branding and pack design. After all, with a fairly predictable brand name, pack size and shape and shots of potato fields, sea salt and pepper grains, the Walkers offering is hardly taking a revolutionary, new and distinctive approach to snack packaging and branding.
