European Union: Eight out of Ten Cats Prefer

Copycat or look-alike products are currently one of the biggest issues for brand owners in Europe. A decision of the High Court of England & Wales, refusing an injunction sought by cat food manufacturers Masterfoods, demonstrates the importance of obtaining registered rights for product packaging, where possible.

The case is also a good reminder that brand protection litigation strategy begins with applications for registered rights.

Masterfoods, a subsidiary of Mars UK Limited, owns WHISKAS brand of cat food, one of the more popular United Kingdom brands, with 13% of the dry cat food market. WHISKAS has long been promoted using a particular colour purple, and the advertising slogan "eight out of ten cats prefer it to their usual dry food".

A competitor pet food manufacturer, Burgess, which was well known for dog food, entered the dry cat food market with a product called SUPA CAT, using purple packaging and the slogan "two out of three cats prefer new Burgess SUPA CAT".

Masterfoods sought preliminary injunctions based on passing off and trade mark infringement. Masterfoods' application for a colour per se trade mark for the colour purple had not registered at that time, so Masterfoods sought to rely on a series of United Kingdom trade mark registrations (in colour) including examples of its packaging from 1995. Current packaging had changed since that time.

On the passing off issue, Mr Justice Lloyd, who was himself "an experienced purchaser of WHISKAS products", found that Masterfoods had a reputation in its particular colour purple, following from its extensive use and promotion of the colour over time (some £2.6 billion in sales between 1991 and 2003). The judge agreed with Masterfoods that a purchaser would locate the WHISKAS product in a supermarket aisle by looking for the colour purple.

The judge also examined documents from the design process for the Burgess SUPA CAT packaging, which were disclosed pursuant to a court order. Those documents showed that Burgess had considered the WHISKAS packaging, and had attempted to design around it. The documents included the comment "the two are very different hues of purple". The judge questioned the relevance of these documents (passing off is actionable regardless of intent), but concluded there was nothing "sinister" in Burgess's activities.

On the issue of the slogans, the judge found that consumers would read Burgess’s slogan as referring to SUPA CAT. Whilst this may call to mind the well known WHISKAS slogan, the judge found Burgess's slogan to indicate competition, rather than association. In the absence of any actual confusion, the judge put himself in the position of the hypothetical shopper, concluding that such a shopper would not confuse SUPA CAT with WHISKAS, or consider there to be a commercial association between Burgess and Masterfoods. The application in passing off therefore failed.

The trade mark case was pleaded under the dilution provisions of the United Kingdom Trade Mark Act 1994, for which it was necessary to prove reputation in the 1995 colour packaging trade mark as registered. Despite the evidence of use of variations on the packaging over the years, and the reputation of the WHISKAS mark, the judge found no reputation in the 1995 packaging designs as registered.

The application for injunctions was dismissed, and costs of £20,000 awarded against Masterfoods.

The case demonstrates some of the difficulties of proving passing off, particularly at an interim stage of proceedings. Proving a likelihood of deception (or, preferably, actual deception) based merely on colours and slogans is difficult, especially where the allegedly infringing product is also branded with dissimilar word trade marks.

Masterfoods' case may have been easier if its registered rights were more solid, rather than having to rely on packaging registrations from 1995.

Producers of consumer goods may therefore wish to consider:

• Applying to register as colour per se marks the key colour/s of their product packaging. These registrations have been affirmed by the European Court of Justice in limited circumstances;
• Registering Community Designs, which now provide a quick and cost effective method of obtaining registered rights (including in colour) for each year's range of new packaging. The "overall impression" test for infringement of a Registered Community Design may well provide additional protection against copycat or look- alike products; and
• Reviewing their IP portfolio, to ensure that trade mark and design registrations for logos and packaging are up to date: there is little point to maintaining old trade mark registrations for packaging that has not been used for five years, as the marks will be vulnerable to revocation for non-use.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.