Legal Aspect of business Project 2, Group 28

Case Analysis of an IP Dispute

Participant names are given following

Abhishek Yadav 2022MBA125
Polimetla Joel Joy 2022phd005
Kamal Ashish 2022MBA152
Nilabh Pandey 2022MBA169
Shivam Ji Srivastava 2022MBA183
Case: Kellogg Co. v. National Biscuit Co.

Dispute: Kellog used the term “Shredded Wheat”, and the similar shape of the biscuit
which was already used by Henry perky.
It's a Trademark dispute

Case History:
● Henry perky made a shredded wheat machine and introduced a cereal in 1893
● The product become successful and the Perky’s company continued to the
manufacturing
● After Perky’s patent had expired, the Kellogg has started the production of
Shredded wheat cereal
● Its stopped its manufacturing in 1919 after objection from Perky however latter in
1927 it again resumed
● In 1930 the Shredded Wheat Company was acquired by Nabisco
● Nabisco again sued the kellogg in Canada and U.S for unfair competition
● The lawsuit was about using the term using “Shredded Wheat” and similar
shape of biscuit, and also about the Kellogg using the picture on its box that is a
pillow shaped biscuit submerged in milk

Analysis:
1. Check weather its a case of unfair trade practice according to Nabisco
2. Shredded Wheat is a generic term and may not require exclusive rights
3. Upon the expiration of Patent, it should have went to public domain
4. We need to identify that whether the term has any primary significance or not
5. Check for evidence weather the case is actually deceptive or not

Result:
1. Nabisco did not claim the rights to create shredded wheat biscuits but they
claimed rights over the name “shredded wheat” and the pillow-shaped form.
2. Shredded wheat term was generally used to categorize these types of biscuits
and no one could have exclusive rights over the term.
3. After Henry Perky’s death in 1908,the patent expired in 1912 and Kellogg's use
of the recipe, term and shape was completely fair.
4. Kellogg was already market leader in the breakfast cereal market and the usage
of the term shredded wheat did not produce any kind of substantial difference in
their sales.
Court Judgments:
In 1935, the district court dismissed the case, it found that Shredded term is used as a
general term and there is no evidence of deception.Court argument was that the patent
has expired and it was already in public domain.However the case appeared again in
different courts.

JUSTICE McREYNOLDS and JUSTICE BUTLER has said that Kellogg was using the
goodwill of his predecessor.

National biscuit company's argument was that Kellog can not use the word Shredded
Wheat along the pillow shape of the biscuit.

Kellogg has agreed with terms of using the Shredded Wheat and the shape
independently.

Final Judgment:
The US supreme court said that the Kellogg company is fair and deceptive in any way,
they are in terms of following the trademark law. It said that the patient was already
expired and it was in public domain. According to law once the patent expired or voided
the patent holder has no rights to prevent some from using the same.

Importance of the case:

● Justice Brandeis' ten-page opinion is now considered as a benchmark to test
whether the term can be protected or not as the term can have a generic
meaning pertaining to the product it is used for.

● Kellogg Co. v. National Biscuit Co is one of the most influential and versatile
trademark dispute cases in US’s Supereme Court’s history.

● Issues highlighted in this case covered every aspect of modern trademark law
and as result, Kellog had an impact on Lanham Act structure. The same case is
used as a case study in numerous trademark opinions and is also used as point
of analysis in other lower courts.
Timeline of the case