Like many of its counterparts, ASDA, a major UK supermarket chain decided, that it was time to copy the leading brand in a key sector of the snacking market, and launch a me-too product under its own label.

The victim: Penguin. A United Biscuits brand and household name to most Brits, who like all seagoing nations have a foible about long-life grain-based dry goods.

But rather than call their copy something generic like “chocolate cream crunchies” they chose a name very close to home: Puffin (German: Papageitaucher). Sadly I have no picture of this classic example of passing-off, for reasons that will become clear below.

Now the makers of Penguin faced a dilemma. They needed the supermarket that was unashamedly copying one of their star products as a distributor. But this very same business partner was now undermining their business. With friends like that who needs enemies?

So one alternative was to call the supermarket’s/distributor’s bluff. Stop supplying the leading brand of biscuits. Then the supermarket would have to decide whether no longer offering the No1 to shoppers would be too risky for them. United Biscuits could have easily played that card.

Instead they plunged their Penguin into even deeper waters and sued the supermarket. Their business partner. A much needed ally. But it paid off. The judge ruled that the Puffin biscuit was “passing off”. The key thing being: could a customer accidentally buy the product thinking it was the other (Penguin)? Answer: Yes. The name was too similar. The supermarket chose a bird, one that dives in the sea, and starts with a P. The pack (sorry, no picture) also looked very similar to the original. So United Biscuits’ efforts paid off.

Despite being sued by their supplier, despite the cost, despite the bad taste left in the mouth, the supermarket kept the Penguin product in the listings. A close call for Penguin, a milestone victory on behalf of all brand managers, but the tip of the iceberg considering the number of supermarkets blatantly copying leading brands’ imagery.

More: here.

Judge’s ruling “Had the Asda product been called for example ‘Bison,’ to take another name from the original list, with a cartoon picture of a brown woolly bison on the packaging, these proceedings could not possibly succeed. …But the name Puffin and the prominent picture of an upright dark-coloured bird with a white front gives me the expectation, as a matter of first impression, that a substantial part of the public who shop in supermarkets would see an association between the Asda product and (United’s) Penguin.“