Mars's injunction request is not the cat's WHISKAS

The High Court of England and Wales has denied Mars UK Ltd's application for an interim injunction in a trademark infringement and passing off action against Burgess Group plc (unreported, July 26 2004). The court held that Burgess's use of (i) purple on its cat food packaging, and (ii) an advertising slogan similar to the one used by Mars for its WHISKAS-marked products did not constitute infringement or passing off.

WHISKAS-marked cat food products have a distinctive trade dress - a purple packaging that includes a picture of the face and paws of a silver-grey tabby cat next to the familiar WHISKAS logo and oval cat device. In addition, a famous slogan "Eight out of ten cats prefer it to their usual food" is often used in product advertising. Burgess has sold feed for animals, including dogs, for a number of years but introduced its first product for cats this year under the mark SUPA CAT. SUPA CAT products are sold in two-kilo bags from specialist pet shops, whereas WHISKAS-marked products are sold both in pet shops and supermarkets. SUPA CAT products are presented in purple packaging, with the word mark also depicted in an oval device. The slogan "Two out of three cats prefer new Burgess SUPA CAT" is a prominent feature of the advertising campaign and clearly played heavily on the WHISKAS slogan.

Mars contended that, pursuant to Section 10(3) of the Trademarks Act 1994, the SUPA CAT mark and device infringed the reputable WHISKAS mark and device by taking advantage of its distinctive character. In addition, it maintained that Burgess was passing off its SUPA CAT products as being associated with WHISKAS.

Justice Lloyd refused to grant an interim injunction based on passing off. He considered that the slogan could not be taken to indicate an association between SUPA CAT and WHISKAS, as it mentioned the actual product by name. Rather, he thought that this indicated intent to distinguish the two products. Furthermore, he remarked that Mars had not shown a seriously arguable case that the SUPA CAT packaging would lead shoppers to believe that the two undertakings were connected. He pointed out that the Whiskas-branded products sell predominantly by their name, and in this respect the Burgess product was clearly differentiated. Consequently, despite some "superficial similarities" between the products' packaging, the average consumer, being reasonably alert and possessing good eyesight, would not confuse the two products nor conclude that some commercial association existed between them.

Lloyd also denied Mars's application for an injunction to restrain the alleged trademark infringement. In order to establish infringement under Section 10(3), a mark owner must prove that the mark has a reputation. Mars had not yet successfully registered the colour purple, although an application had been submitted, and since there was no suggestion that the WHISKAS word mark had been infringed, the argument concerned the silver-grey tabby cat and oval cat device. Lloyd indicated that Mars had not established that these devices had a reputation and had therefore not made an arguable case for infringement. As such, there was no need to consider other tests of infringement under Section 10(3).

Marc Wilkinson, Hammonds, London