An interesting package design case has been decided by the courts. It involves the hotly contested magazine market. The segment is used cars, and the person being targeted is attracted to what are called "affordable" classic cars rather than "top of the range" marquees. This type of car enthusiast also expects practical advice in their magazine for "do-it-yourself" work on their classic cars.
A substantial number of this segment (estimated at 30% of the magazine's circulation base) do not subscribe to their magazine, but purchase retail. Consequently, the magazine's cover is considered a critical component in attracting the buyer away from one magazine to another. In this type of situation, the retail buyer's attention has to be pulled in with each issue, so that the distinctive features of a magazine's cover become more significant than might otherwise be so.
The Case
The upset player in this case is "Practical Classics," in business in one form or another in the United Kingdom since 1980. The knock-off is "Classics," who had published only their first two monthly issues by the time they landed in England's High Court of Justice.
At the start of the case, the judge noted that the name of each magazine was generic, or descriptive. So, there could be no claim made based on the names alone. Practical Classics therefore sought a preliminary injunction (good until a full trial could be held) for the alleged infringement of the copyright it held in its front cover. They also alleged that because of the similar covers, Classics was trying to pass itself off as Practical Classics.
The Decision
The judge began his decision by looking at the similarities contained in the covers of the two magazines. For example, each had a "strap line" at the top and bottom. Below the top strap line, each cover had a large white space that contained the magazine's name. Each of the white spaces had an oval containing the word "classics" and that the oval was reminiscent of a car badge. The word "classics" had a similar font. Then there was the large panel below the white space that contained a picture of a car. There were other similarities noted by the judge, but you get the gist from this list.
The judge stated that:
"It is a remarkable coincidence if (Classics) came up with such (a) close imitation...without looking at (the Practical Classics) cover." He said that while "many features of the...covers are not unusual...the particular combination...is striking indeed."
This is perhaps one of the critical lessons for package designers to walk away with from this case. It is not the subsequent marketer's use of individual standardized features per se that can create problems. One or two similar features on their own may not necessarily be an issue. It is these choices in the context of the overall package design that can become problematic. Context is everything.
To show how the combination of similar features can create confusion in the marketplace, consider the evidence of various witnesses in the magazine cover case. One witness thought that Classics was a re-launch of Practical Classics with a new name. The judge commented on this testimony by saying that:
"Only on a closer reading did the (witness) see it was a different magazine. Even at that stage he wondered whether there might be a connection between the two magazines, and he actually telephoned (Practical Classics) to inquire."
The judge noted what another witness said:
"when he saw the cover of the (Classics) magazine, its cover design led him to believe that it was a...spin-off from Practical Classics..."
The judge granted the preliminary injunction, saying the case:
"Seems to me to show a well arguable basis for a case of confusion...from a misrepresentation by (Classics), conscious or not -- it matters not for passing off -- by the use of Practical Classics' features."