For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 19 August 2009

After a few drinks, perhaps they do look alike

Now that the temperature in England has soared to fresh and unexpected summer heights, the IPKat's readers have turned their thoughts once again to drink. This is presumably why the Kat's email in-tray is now piled high with requests for him to cover the dispute between two giants -- Diageo and Sainsbury's -- over Diageo's popular Pimm's product, a drink that is consumed as though it were a fruit salad.

According to the Daily Mail, MarketWatch and BrandRepublic, Diageo is suing Sainsbury's for copyright infringement. The IPKat is a little surprised, since he didn't immediately spot anything other than the rounded hump at the top of the label. The Mail says:

"The deep red colour is the same. The red lettering and shape of the bottle is
the same. The fact it can be added to lemonade with fruit is the same. Even the
name - Pitchers - is similar".

That may well be, but the Kat would have preferred something he could point to with greater confidence when addressing the judge and seeking to convince him that there had been a copying of a substantial part of whatever the original work is. English case law could do with some tidying up with regard to the extent to which original products are protected against lookalikes. However, it would be extraordinary (in his humble but personal opinion) if Diageo were to succeed on these facts while apparently stronger cases of lookalikes could not be protected on the facts of Whirlpool v Kenwood and Procter & Gamble v Reckitt Benckiser).

Merpel says, were it not for the fact that all the papers call it a copyright infringement, I might have guessed it was a claim for trade mark infrgingement or passing off (which is what several of the Kat's email correspondents wrote too). But given the difficulty of registering product shapes and label shapes as trade marks, and the difficulty of enforcing them against similar-looking competitors, perhaps copyright is a better bet. Tufty notes that Diageo has affirmed its commitment to keep on trading with Sainsbury's, which will continue to sell other Diageo lines:
"It would be inappropriate for us to comment further other than to say that
Sainsbury's is a valued customer of Diageo".
Sainsbury's has indicated that it will vigorously resist Diageo's claims.

The last word here comes from the pocket-calculator-wielding Trevor of Perth, posting a comment on the Daily Mail article:
"They do not look the same bottles, lettering or anything else. And just for the
record! The Sainsbury's brand (Usually the cheaper option) is MORE expensive. At
£10.79 for 70cl it equates to £15.41 per Litre A whole £1.41 MORE than the
Pimm's brand! Why shold Diageo be worried I always but the cheaper option!!"

What the experts say (or are quoted as saying) in Marketing Week here
Pimm's history here (needs a clean-up)
Pimm's PinPom here

13 comments:

Anonymous said...

The best would be that the producers of Pitchers and Pimm's sit together, drink each other's red stuff for 24 hours. The winner is the one that still stands.

Anonymous said...

I suspect the reference to copyright is a mistake by the newspaper. Diageo has trade marks and Pimms must be a famous trade mark. "Riding on the coat tails" and all that.

Tris said...

The Pimms label - not just shape - is a UK trade mark. (click here).

The shape, the placement of elements within that shape, and the text styles are definitely similar. And wouldn't you say there was likelihood of consumer confusion, especially with the big red word beginning and ending with the same letters?

I noticed that, even though it's not on the bottle, Sainsbury's is marketing the drink with the apostrophe before the s (Pitcher's). Did one of their staff get confused? ;)

Anonymous said...

Recently our local Sainsbury's store was offering Pimms as a £10 bottle promotion. It is puzzling as to why they now wish to compete. At Lidl today it was on offer £2 less!

Anonymous said...

Copying of the letter "P" might amount to substantial similarity in copyright law ;-)
(please - this is not to be taken seriously - though I'm sure some will).

Anonymous said...

Hey. What about copyright protection in the taste of the drink? Sounds weird? Read this: Su Li Cheng [2008] EIPR 93. And this: Pollack (1991) 12 CardozoLR 1477.
One more thing: I was living in Scotland, so I know a thing or two about Diageo (eg that they want to close down the Johnnie Walker factory near Glasgow and put a whole little community on the dole) but I know nothing about Pimm's. Is it a classic drink? If so, when did the "author" of whatever is supposed to be protected die?

Dr. Michael Factor said...

I am not sure that there is a likelyhood of confusion here, so much as a generic supermarket doing their non-branded rip-off since the shape of the bottle and the color scheme are similar.

This is a little reminiscent of the recent similar smelling perfumes case. copyright is the wrong term, as would (probably) be passing off, but there could be a case of trading on reputation.

PIMMS is probably more interested in maintaining their market share and restricting a competing prouct.

We had a similar case with similar shape and color of ice-cream tubs in Israel recently, see:

http://blog.ipfactor.co.il/2009/08/06/israel-ice-cream-wars-cool/

Anonymous said...

Not sure I'd be confused, but if there are trade marks for the Pimms label, this has to be taking unfair advantage under L'Oreal v Bellure. No confusion required.

Anonymous said...

If you follow the link in Tris' comment, you can find out, that the Pimm's label trade mark has been withdrawn.

David said...

But this one hasn't.

Anonymous said...

first of all thank you for your blog: I enjoy it immensely.
I am attaching a link to a recent copyright case in the Federal Court in Australia where there was held to be infringement of copyright in the layout of elements on a T-shirt. If the Pimms case really is a copyright case, perhaps it will proceed along similar lines, though I note that in the Australian case copying was admitted.

http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCAFC/2008/197.html?query=^elwood%20cotton%20on

Laurel Shore said...

Some people have been a bit surprised by the apparent use of copyright infringement in this case, as an adjunct to (or maybe even instead of) TM or passing off. I'm not involved at all, and only have my experience as an IP litigator to go on. But to me it seems like a very sensible idea to go for copyright infringement. The trouble with IPkats is that sometimes they think about the law too much, and not enough about what you have to do to WIN.

Q: what wins cases?
A: prejudice wins cases.

Q: will a copyright claim withstand a strike out?
A: yes.

Q: what will a copyright claim give rise to?
A: a claim for disclosure of materials relating to the creation of the Sainsbury bottle, in order to force Sainsbury to give evidence of independent design: (Designers Guild et al).

Q: what will that lead to?

A: who knows, but probably a evidence to show that Sainsburys' design team had access to and used the bottles (only for inspiration of course, not copying).

Q: what does that give you?
A: prejudice and intent.

Jeremy said...

To Laurel Shore:

"The trouble with IPkats is that sometimes they think about the law too much, and not enough about what you have to do to WIN". Show us the evidence, please!

"Q: what wins cases?
A: prejudice wins cases". You are either a US litigator who pleads patent infringements in front of a jury, or you're making it up as you go along.

"Q: will a copyright claim withstand a strike out?
A: yes." Doesn't it depend on what the allegedly infringed work is?

"Q: what will a copyright claim give rise to?
A: a claim for disclosure of materials relating to the creation of the Sainsbury bottle, in order to force Sainsbury to give evidence of independent design: (Designers Guild et al)". And tm infringement/passing off doesn't provide equally promising opportunities for disclosure?

"Q: what will that lead to?

A: who knows, but probably a evidence to show that Sainsburys' design team had access to and used the bottles (only for inspiration of course, not copying)". and to think, the designers may never have seen a bottle of this popular summer drink, just one short year after Diageo spent £5m+ on a national marketing campaign for the drink ...

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':