While copying is often cited as the sincerest form of flattery, when it comes to so called ‘copycat’ products, it can be a real problem for brand owners. So, what can be done to protect a brand against this kind of infringement?
‘Copycat’ products are products which are intentionally designed to mimic a well-known brand, by copying aspects such as the product name, design or packaging, to make a purchaser associate one product with the other. In recent times, more and more copycat products can be found on shelves, particularly in the food and drinks industry. This can be seen in the high profile disputes between retailers, Marks & Spencer (M&S) and Aldi, around the well-known caterpillar cake, and light-up Christmas gin bottles[1], which have dominated the headlines. It is therefore more important than ever that brand owners have clarity on this issue.
The similarity between copycat products and their counterparts is created in a deliberate manner, to take advantage of an established brand’s goodwill and reputation. However, this calculated similarity is intended to fall short of the test for ‘passing-off’ (the creation of deception or confusion), making it more difficult than one might expect to protect a brand against this kind of infringement. The key points in relation to taking action against this are: 1) the way in which the copycat retailer sells their product; and 2) the protection that the established brand has in place to take action against copycats.
Since copycat products often rely on visual cues to draw on consumers’ sub-conscious, positive feelings towards the original brand, it can be easy to identify which elements of the branding should be protected. This can include any element which makes the product stand out to the consumer, and which is most likely to be associated with the established brand; e.g., particular colours, graphics or layouts.
Registering and enforcing trade marks is usually the best method for protecting the aforementioned elements. Brand owners often seek to argue that a lookalike product is similar enough to an earlier registered trade mark that it will likely cause confusion to consumers, who may mistakenly believe that the products come from the same business or that there is a commercial arrangement between them (section 10(2) of the Trade Marks Act 1994). However, in regard to copycat products, UK Courts have held that consumers are often aware that they are purchasing a cheaper alternative product to the established brand product, so it can be difficult to establish trade mark infringement or traditional passing-off on the basis of confusion.
In August 2022, the Swiss Federal Court ordered Lidl to destroy its own-branded chocolate bunnies, as they were found to be confusingly similar to Lindt’s well-known gold wrapped bunny, which is registered as a 3D trade mark. The Court noted consumers will typically choose products that are familiar to them and will not necessarily consult labelling.[2]
A similar decision was made by the Court of Session in Scotland, when William Grant & Sons (William Grant) succeeded in its claim for interim relief against Lidl.[3] William Grant has a registered trade mark for the shape of its Hendrick’s gin bottle. When Lidl re-designed the bottle and label of its “Hampstead” gin to a dark round bottle with a diamond label shape, William Grant relied on its shape trade mark to argue infringement, on the basis of Section 10(3) of the Trade Marks Act 1994. Relying on this provision means that a UK brand holder only has to show that it has a sufficient reputation in its trade mark, which the lookalike takes unfair advantage of or dilutes, by creating a link in the mind of the consumer. Crucially, it is not necessary to provide evidence of customer confusion. This case demonstrates that registering similar shape trade marks can be crucial in allowing brands to take on the copycats successfully.
While not strictly ‘copycat products’, the importance of having trade mark registrations for key elements of branding was shown in the recent case of Lidl v Tesco.[4] In an interesting turn of events, Lidl relied upon section 10(3) to argue that Tesco’s current Clubcard logo, a yellow circle on a blue square background, infringed Lidl’s logo. The Court held that, by using this logo, Tesco had "taken unfair advantage of the distinctive reputation" for low prices which consumers widely associate with Lidl’s branding and products.
When looking to enforce their rights, UK brands generally take action in the High Court in England or the Intellectual Property Enterprise Court (IPEC). Scotland is an often-overlooked jurisdiction for the purposes of IP enforcement but there are some tactical advantages to pursuing actions in the Court of Session (Scotland’s highest civil court), including the potential elements of surprise, timing and costs.
Where an infringer has physical stores in Scotland and/or where there is an online infringer selling throughout the UK, brands will often have the option of bringing an action for an interim interdict (the Scottish equivalent of a preliminary injunction) in Scotland. The Court of Session may also grant a UK-wide interim interdict on a ‘without notice’ basis – which means the first an infringer may learn about the court order is when the order is served upon them. This element of surprise can work to the brand owner’s advantage, allowing matters to be resolved quickly.
For more information on dealing with copycats products, please follow link to our webinar here.
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