This is the first time we have seen a high profile brand owner take on a Supermarket for copycat packaging since United Biscuits successfully took ASDA on in their claim for passing off in 1997…and it is about time. The cost and uncertainty of the law of passing off has to date deterred brand owners from making a stand. It will be interesting to see whether the implementation of the Consumer Protection Regulations last May has influenced Diageo’s decision to take legal action.

The Regulations provide brand owners with an alternative weapon against those looking to trade off the back of their success by specifically banning “the promotion of a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by that same manufacturer when it is not”. Although the Regulations are predominantly part of the criminal regime, it may be that Diageo use their existence in the civil court for emphasis when presenting the case of an intellectual property right infringement.

It remains to be seen whether an enforcer such as Trading Standards decide to investigate this potential breach of the Regulations. However, if they do this would undoubtedly strengthen Diageo’s case as well as give them a right to apply to the criminal courts for an Order for the forfeiture of Sainsbury’s Pitcher.

Brand owners should be watching this space very closely indeed.

Posted by Fiona Carter
0115 976 6224
fcarter@brownejacobson.com