I have been contacted by Laila Smith. She and Sara Kane are directors of Dune for whom we act.

Dune is a large food retailer which sources drink and foodstuffs from suppliers around the world and sells them via its discount food outlets across the UK. Dune tries to offer value for money for its products where possible and takes great care to offer customers quality products. As a result their brand has recently become very popular with budget minded consumers. One line of products, a range of confectionary themed around animals and insects, has been particularly successful and has become a real income earner for Dune. The leading product in this range is branded 'Dolly the Duke' which has proven very popular for children's birthday parties. The cakes have a distinctive duke shape. The duke shape for the cake means that the packaging is also duke shaped with a transparent plastic seal so that you can see the duke shaped cake within.

Laila phoned me yesterday to say that she is very concerned about a phone call she has just had with Raina. Raina is the director of Raina Food Limited ("S & M Ltd") which markets a number of food and drink products in novelty packaging which are sold all over the UK in supermarkets and convenience stores. One of its top sellers is 'Dani the Duke' which is also a duke shaped cake. There are no trade marks that are relevant on these facts to Dani the Duke. Dani the Duke is also sold in a duke shaped packaging with a transparent plastic seal so that you can see the duke shaped cake within.

Laila has said that Raina was very angry and accused her of 'poaching her customers'. She said that sales of Dani the Duke sales have decreased in the last six months of trading in the Manchester area in particular and she is sure this is because customers have been buying Dolly the Duke under the impression they are Dani the Duke as the products have similar names and are sold in very similar packaging. She finished the conversation saying she was going to sue Dune for 'passing off' unless it stopped selling Dolly the Duke at once.

Laila has told me that she and Sara have only just become aware of the existence of Dani the Duke. She agrees with Raina that the packaging of the two products is very similar, particularly on first sight, as both have a distinctive duke shape, as well as having similar names. Laila explained that Dolly the Duke was chosen as a brand because ducks are beautiful and that although the cakes are very similar shapes this could be accounted for in that they are both stylised representations of a duke.

Laila is adamant that the average customer would not confuse these items. Laila has done some research and found that there is a well-established market for duke themed cakes. They are also sold in different outlets, Dolly the Duke being found in Dune shops whereas Dani the Duke is sold in other supermarkets and convenience stores.

However, she understands that Raina Foods Ltd is a large trading company with a reputation for aggressively protecting its brand so she has asked us to advise on Dunes position with respect to a passing off action and what steps it can take to protect itself. Neither Dolly the Duke nor Dani the Duke are registered trade marks and our client does not want us to advise on trade mark registration at present.

Question:

• Is Dune vulnerable to an action for passing off by Raina Food's Ltd?
• What steps can Dune take to protect its position?