Whiskas thought Supacat’s maroon dried catfood bags were just too close to its purple ones for comfort. It sued for passing off and trademark infringement and sought an immediate injunction. But was there evidence that nine out of ten cats were confused?
Who: Mars UK Limited and Burgess Group plc
Where: Chancery Division of the High Court, London
When: 26 July 2004
Mars, makers of Whiskas, was not happy about a dried cat food called Supacat which had recently been launched by the defendant Burgess.
Supacat was available in maroon bags bearing the word Burgess. Mars was concerned about the similarity with its own Whiskas dried cat food product, sold in resaleable, mainly purple bags bearing the name Whiskas on a cat mask design.
Mars obtained no satisfaction from Burgess in response to its initial letters of complaint, so it issued proceedings in the Chancery Division of the High Court.
Mars sought an urgent, interim injunction pending trial preventing Burgess from selling its product as described. This was on grounds of passing off and trademark infringement.
The Mars registered trademarks related to the specific shade of purple that was used on its bags of dried cat food. The Burgess/Supacat bags were maroon, not purple, so Mars had to establish a likelihood of confusion in order to have any prospect of succeeding on either its passing off or trademark infringement claims.
Here Mars had a difficulty, since it was unable to produce to the Court any evidence of actual confusion between the two products occurring amongst shoppers.
Differences "readily noticeable"
The Court's view was that the colours used in the two packs were different, and that the packs were large enough for differences between them to be readily noticeable by shoppers. The fact that the defendant's product clearly bore the names Burgess and Supacat, whilst the Whiskas equivalent had the Whiskas brand and a cat mask design, were relevant here in the Court's view.
All this meant that despite some superficial similarities, the differences of colour and the layout of the packs were significant, and in the Court's view, no reasonably alert customer with reasonable eyesight could possibly associate the Burgess product with Whiskas.
This meant that Mars had not shown a seriously arguable case in trademark infringement or passing off, so the injunction was refused.
Why this matters:
Once again, in a case involving packaging with "superficial similarities," a claimant has failed to win the day against an alleged "lookalike" product.
The case underlines that in an action for passing off or for trademark infringement, where the brands in question are not exactly the same, it is always going to be an uphill task to win the day if one is not able to produce evidence of actual confusion being caused.
It also emphasises that where the brand names are prominently shown on the relevant packs and these names are quite different, it is going to be difficult to press home a complaint of passing off or trademark infringement on grounds of similar colour alone.
Similar scenario, different result for Orange v EasyMobile
This verdict may have been made much of by Stelios Haji-Ioannou in his recent discussions with Orange over alleged similarities in the colours used for his brand new EasyMobile mobile phone business and the prevalent shade used by Orange for its own competing offering and an Orange registered trade mark. In the event, however, discretion proved the better part of valour when Stelios backed down in the face of pending court proceedings, agreeing to "work together with Orange to find an amicable solution."