Taking on the Copycats - Tips on Protection and Enforcement

A ‘lookalike’ or ’copycat’ product is one that mimics well-known household brands by copying some or all of its packaging, name or design in a deliberate manner. Recently, a stream of lookalike disputes has played out in the public eye. While traditionally a tale of branded manufacturer against the retailer, the two recent IP infringement claims by Marks & Spencer (M&S) against Aldi regarding its caterpillar cake demonstrate that the issue is just as current for retailers.

The intention of a copycat product is clear – to profit from the goodwill and reputation of the established product, but to fall short of creating deception or confusion. Against this backdrop, one might assume there is a clear path for established brands taking legal action to prevent the copycats. However, the way in which the copycat retailer sells their product and the protection that the established brand has in place are crucial. 

Registered trade marks are usually the best weaponry. Lookalikes typically rely on visual clues, drawing on the consumer's sub-conscious positive feelings towards the original brand. This provides the starting point for knowing what to register – the stand-out attractive elements that give the product its look and feel – and create familiarity with the consumer. These elements may include colour, layout, graphics or shape of packaging. 

Often the owner of a registered trade mark will seek to argue that the lookalike product is similar enough to an earlier registered trade mark that it will likely cause confusion to consumers, who mistakenly believe that the products originate from the same business or that there is a commercial arrangement between the producers (Section 10(2), the Trade Marks Act 1994). The difficulty, however, is that confusion does not typically arise in copycat cases. The UK courts have ruled that consumers know they are buying a cheaper store version rather than the original branded product. For this reason, the tort of passing off has also fallen short of protecting against copycats in court, since there is a pre-requisite of confusion/deception. 

In August 2022, the Swiss Federal Court 1 ordered Lidl to destroy its own ‘Favorina’ 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 that consumers will typically choose products that are familiar to them and will not necessarily consult labelling. 

A similar decision was made by the Court of Session 2 in Scotland, when William Grant & Sons succeeded in its claim for interim relief against Lidl.  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 must only 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. Therefore, registering similar shape trade marks can be the difference in allowing brands to take on the copycats successfully. 

Having an IP filing strategy is an important step in protecting the time and money invested in product development, but it is equally important to have an IP enforcement strategy. 

When looking to enforce their IP, 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 element of surprise, timing and costs. 

Where an infringer has physical stores in Scotland (as with the Lidl case 3 ) 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. In certain circumstances, the Court of Session will grant a UK-wide interim interdict order on a “without notice” basis, which means the first an infringer may learn about the court order is when process servers turn up at their offices or stores to serve the order. Often, the element of surprise works to the brand owner’s advantage, the infringement ceases in short order and matters are resolved relatively quickly. 

Of course, any enforcement strategy must also take into account PR aspects and the potential for ‘trial by social media’. In the M&S IP infringement claims, Aldi was quick to bring the caterpillar cake wars to the court of public opinion via Twitter, when M&S accused it of copying. We are seeing this tactic being used more frequently to assert pressure on brand owners to back down and it must therefore be considered when deciding what action to take against infringers. 

Commencing successful enforcement action against copycats is not always straightforward but as we have demonstrated in this article, there are steps brand holders can take to put themselves in a stronger position when it comes to taking on copycats.