Own-it | Intellectual Property Know-How for Creative Businesses

Not a pretty pitcher

Not a pretty pitcher

Published: 18.08.09 at 09:46

Sainsbury's is being sued by one of its biggest suppliers over a copycat version of Pimms.

Commenting on the dispute, Steve Kuncewicz, media and IP lawyer at Manchester firm, Ralli, said: 'This kind of case is nothing new. Asda found itself involved in a very protracted dispute with United Biscuits over 10 years ago after the supermarket introduced "Puffin" biscuits as a competitor to the "Penguin" brand.

'The issue here was "passing-off", which is a different course of action to Diageo's claim for copyright infringement.

'In that case United Biscuits won because the Court found that the packaging of the "Puffin" was deceptive by virtue of the fact that it also had an image of a "sea bird" with "dark colouring and a white front"; this and the use of the word "Puffin" suggested some kind of connection between the two.'

A cheaper alternative
Kuncewicz says that cases such as these haven't deterred retailers, with many now selling their own brand alternatives alongside market leaders. 'The credit crunch will probably make the situation worse,' he explains, 'as many customers may find themselves hesitating to buy a "brand name" when there is a cheaper own-brand alternative. It's perhaps this concern that has led Diageo to take action to avoid what they may well see as a threat to the value of its brand.'

If the claim is based on copyright infringement, then Kuncewicz says that it may be because of the similarity between the two labels: 'The artwork on both will be protected by copyright as an "artistic work". Infringement takes place when a "substantial part" of an existing image is used in another, and these cases tend to be much easier to fight than passing-off cases, which would usually require evidence of confusion in the marketplace. This is usually proved via survey evidence, as took place in the Neutrogena v Neutralia case a few years ago.

'It may be that Diageo have gone for what they see as the easier claim, but I'd be surprised if any court case didn't also contain allegations of passing-off and or trademark infringement, as I'm sure that a number of trademarks will apply to the Pimm's packaging, even if the name is further away from Pimm's than Puffin was from Penguin.'

'What's interesting is the fact that Sainsbury's is one of Diageo's biggest customers and  they don't think that their relationship with the retailer will be affected,' adds Kuncewicz.

He says that there are a number of conflicting legal points at work in this dispute, but behind all of them is a commercial relationship which both sides will be very keen to maintain. Diageo is, after all, one of the biggest drinks producers in the world and Sainsbury's would have a lot of empty shelves in their wines and spirits aisle if Diageo chose not to deal with them any more.

However, that's very unlikely, especially as Diageo themselves will not be keen to fall out with one of the UK's longest-standing food retailers, serving 18 million customers a week through nearly 600 stores.

Photo credit: Simmon Doggett

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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