US Court Grants Trade Dress Injunction against Store Brand Sweetener

On June 26, 2008 McNeil Nutritionals LLC, the makers of Splenda®, a non-calorie sweetener, was granted an injunction prohibiting Heartland Sweeteners LLC from distributing a store brand sweetener product found to have similar packaging. The latter company packages store brand sucralose for five different retail store chains. The US District Court for the Eastern District of Pennsylvania (District Court) had at first refused an injunction, holding that consumers are highly aware of in-store private label products and expect to see them on retail store shelves side by side with branded products. On appeal, however, the 3rd US Circuit Court of Appeals reversed that ruling, finding a likelihood of confusion between two of the products and the branded competitors, and sent the matter back to the District Court to re-evaluate on two points, commenting that the District Court's initial finding would have set a different and lower standard for trade dress cases for store branded products than for branded competitors. Although the US decision is based on factors slightly differing from those applicable in Canada and although the case is still at a pre-trial stage (no expert testimony was given), it is interesting to observe a court evaluating the likely reaction of a consumer to same-shelf positioning of the two types of products, generic and branded. For the full reasons for judgment of the District Court (27 pages in length), see: http://www.paed.uscourts.gov/documents/opinions/08D0752P.pdf Summary by: Lea Epstein