Copying is said to be the highest form of flattery, but when does inspiration become infringement? With a range of intellectual property (IP) rights available, it’s important for brands to be aware of the full range of protections and possible routes of action to protect their most important products and designs. 

Here we explore some of the key rights and actions available in the UK and a selection of countries across Europe and Asia which can assist in tackling lookalike products. 

What are lookalike products and how are they tackled?

Lookalike products take inspiration from popular or iconic existing products and can range from products that are almost identical to the original, to products that are merely reminiscent of the famous product that came before. Often (though not always) the lookalike product is offered at a lower cost, presenting an alternative for many consumers. They are sometimes called ‘dupes’.

While benchmarking and taking inspiration from competitors is common practice in the design sphere, sometimes these lookalike products are too close and brands consider they are harmful to the investments made into their reputation, image and distinctiveness. There is a very important distinction between taking inspiration from competitors and infringing their IP rights. This distinction, however, may depend on the specific IP right in question.

Often, tackling lookalike products is through a patchwork of IP rights such as trade mark, copyright, passing off/unfair competition and registered and unregistered design infringement. In the interests of certainty, brands are encouraged to ensure they have the appropriate IP registrations for their products where possible and to ensure they keep appropriate records for proving subsistence of unregistered rights.

United Kingdom

Registered trade marks and passing off

Names, logos and packaging can all be registered trade marks. Shape marks are also possible, though they often face distinctiveness challenges to be registered. The most commonly used route in issues concerning lookalike products is infringement under section 10(3) of the Trade Marks Act 1994 (TMA), though other types of infringement actions are available.

To succeed under section 10(3) TMA, brands must establish that: 

1. their trade mark has a reputation in the UK.
2. the lookalike product is using a similar or identical mark without consent in the UK.
3. this use gives rise to a link between the disputed sign and trade mark in the mind of an average consumer.
4. this use gives rise to one of three types of injury, the most common for lookalike products being unfair advantage of the brand’s reputation or detriment due to dilution. 

The link between the disputed sign and trade mark is often not an issue in lookalike product disputes; evidence of consumers describing the product as a ‘dupe’ or ‘rip off’ will often suffice. Credible evidence for injury is, however, more problematic. In the case of Thatchers v Aldi (which is subject to appeal), the court was not persuaded that Aldi gained an unfair advantage after analysing evidence such as Aldi’s consistent sales figures of other similar fruit cider beverages. Thatchers’ argument that the supposedly inferior taste of Adli’s range of cloudy lemon cider would tarnish Thatchers’ reputation was also dismissed.

Passing off is a flexible unregistered right which can protect features of product design, packaging and get-up which have ‘goodwill’, against third party misrepresentations causing damage to that goodwill. It can be a challenging case to make evidentially and recent actions have tended not to succeed. However, this right should always be considered as part of the brand owner’s enforcement strategy in the UK.

Copyright

Original artistic and literary works can be protected under the Copyright, Designs and Patents Act 1988. This protection can apply to phrases of text, graphic designs, logos, the layout of packaging and sometimes even the product itself, meaning it can be a useful and flexible route to tackle lookalike products. It does not require registration in the UK (though may do in other territories). 

Copyright is infringed if the whole or a substantial part is copied. A “substantial part” is not considered quantitatively. A single element of the author’s intellectual creation could constitute a substantial part. This means that if even small elements of a product’s get up are incorporated into lookalike products it may be possible for brands to take action, making copyright a great option for tackling lookalike products. 

Registered and unregistered design rights 

The appearance of a product may be protected through design rights. Registered design rights can protect external shapes and colours of a product (among other things) while unregistered design rights may protect the shape or configuration of a product, but not surface or colour decoration. 

Unregistered design rights offer automatic protection for valid designs and can last for up to 15 years, meaning they are useful routes for action in lookalike disputes. Nevertheless, following cases such as Marks and Spencer v Aldi, registered design rights are increasingly considered viable routes to tackle lookalikes and registration is relatively cost effective, quick and lasts for up to 25 years. 

The key question for brands to consider when pursuing registered design infringement is whether the design creates the same overall impression on the informed user. Unregistered design rights may be infringed through reproducing the designs for commercial purposes. 

Europe

Registered trade mark, copyright and design actions are available in the same way as in the UK, although there are some local procedural differences that can influence the overall strategy. 

Germany

Unfair Competition

Most continental European countries have an action against unfair competition. For example, in Germany, brands can protect goods, concepts or systems (such as modular shelving systems) against unfair imitation under the Unfair Competition Act.

For an unfair imitation action to succeed, brands must prove that:

1. there is an identical or similar imitation of a product.
2. both products are offered on the market.
3. the imitated product has a competitive individual character. 

The concept of “competitive individual character” is similar to distinctiveness in trade mark law, novelty in design law or intellectual creation in copyright law. It is satisfied if the imitated product has certain unique selling points and is established on the market with a reputation. 

Brands must then establish grounds for unfairness such as avoidable deception of commercial origin or exploitation of reputation, where deception is assessed in court on a largely theoretical basis. Therefore, if there is a possibility of deception of origin or exploitation of reputation, brands may be able to succeed in tackling lookalike products through this route.

Procedural benefits

Action in Germany also has many procedural benefits. For example, it’s possible to obtain preliminary injunctions for an unfair competition action relatively quickly. These injunctions have predictable costs and the injunction is served immediately without an expiry date. 

Spain

The ‘Blank Canvas’ doctrine

There are also procedural benefits in regions where there is a difference in local procedure and judicial climate. For example, the Alicante court in Spain has developed a pro-brand owner approach known as the ‘blank canvas’ doctrine. This court starts with the principle that when a competitor is designing a competing product to a leading brand, the competitor has “infinite possibilities” of creating a sign for its product, on a blank sheet of paper. If, in the Courts’ view, the result of filling in that blank sheet of paper was to create a sign very similar to the earlier mark, without making the investment and effort made by the original brand owner, such that the new entrant attempts to position itself in the market in the wake of the brand owner, the Court is likely to make an unfair advantage finding.

This route is based in EU trade mark law and is considered robust when compared with various unfair competition actions. It is also particularly attractive to claimants because this court has the power to grant EU-wide injunctions not just where the defendant or claimant is established in Spain but also, crucially, where both parties to the litigation are established outside the EU. This makes it a useful venue for international disputes. 

Asia–Pacific

China

In China, depending on the characteristics of the product, trade dress (i.e., the visual appearance of a product or its packaging) may be protected under trade mark, copyright or design patent law, or as an unregistered right under the China Anti-Unfair Competition Law (AUCL). Below, we take a look at design patents and the AUCL. 

Design patent

New designs that are aesthetically pleasing and suitable for industrial applications may be protected in China as a design patent. The term of protection for a design patent is 15 years. 

The “aesthetically pleasing” factor is determined by considering the colour, shape and pattern of the whole or part of the product. Design patents are not substantively examined in China. Even if a design patent is granted, the design may not be enforceable if the design lacks novelty. 

When determining whether there has been infringement, the courts consider both the design of the product and the “design space” of the product (i.e., if the design was for functional purposes, there is less “design space”), a concept under China’s Patent Law. For example, even if certain parts of a product are similar to another design, it may not be considered infringement if the design was for functional purposes and there was a low degree of “design space”, e.g., the shape of fan blades, which primarily serves a functional purpose. 

China Anti-Unfair Competition Law (AUCL)

Trade dress is also protected under the AUCL, if the name, packaging or decoration of the product has a “certain degree of influence”.  

Article 6 of the AUCL states that a business may not, without permission, use a label identical or similar to the name, packaging or decoration of another person’s product with certain influence if such use would mislead a person into believing that the product comes from the brand owner or has a particular connection with another entity. 

In practice, an unfair competition claim would be bolstered if the trade dress has a higher fame status in the Chinese market. Evidence such as awards, advertisements on television programs, audit reports and certification issued by Industry Associations can help demonstrate the degree of “influence” of the mark.

Hong Kong

Lookalike products may be tackled in Hong Kong through various IP rights, including trade mark, copyright (which is similar to the position in the UK), registered designs, as well as the tort of passing off. Below, we take a look at trade marks and passing off.

Trade marks 

Labels, packaging and logos may be registered as a trade mark under section 3(1) of the Trade Marks Ordinance (Cap. 559) (TMO), so long as the sign can be represented graphically. 

While rights owners typically pursue claims for infringement under section 18(3) of the TMO, which is similar to action under section 10(3) of the TMA in the UK, brand owners may also consider a claim under section 18(4) of the TMO (i.e., protection of a “well-known” mark). This route is evidenced in several cases in Hong Kong where the long-established company in the medicated balm and oil business, Wong To Yick, relied on section 18(4) of the TMO in parallel with section 18(3) to combat lookalike products. 

In practice, the threshold to prove that a trade mark is “well-known” is high; a large volume of evidence is oftentimes required to prove this. The courts assess this factor with regard to, for example, the degree of public knowledge or recognition, its associated value, any record of successful enforcement and promotions.

Passing off 

To succeed in an action for passing off in Hong Kong, just as in the UK, brands must establish that there is:

1. goodwill or reputation associated with specific elements of their brand.
2. misrepresentation by the lookalike brand.
3. damage or potential damage suffered by the brand as a result of the misrepresentation.

The difficulty in passing off cases is proving the second factor (i.e., misrepresentation). This is because mere copying would not suffice in a passing off claim; there has to be false representation by the infringer that its products are those of the brand. 

Final thoughts

It’s clear that there are many routes available to brands to protect their products against lookalikes around the world. The success of a claim will depend on the particular features in question, the availability of evidence to prove infringement and the extent of alleged copying. 

Designing the best enforcement strategy will require:

• a robust trade mark and design filing program.
• good record keeping of unregistered right subsistence and ownership.
• effective monitoring of the market and early action against potential infringers.
• having an international perspective as to take action where the chances of success are highest and maximum pressure can be exerted.  

Authors: Josie Price, Louise Sargeant and Nick Aries (UK); Nicholle Yu, Yue Gao and Alison Wong; with thanks to Dr. Jan Bärenfänger and José Miguel Lissén for materials upon which the Germany and Spain sections were based.