On the look-out for lookalikes

With Christmas fast approaching, rights holders are particularly vulnerable to copycat products being offered for sale at cheaper prices. We’ve seen a number of lookalike product cases in the UK courts this year, with several heading for trial in 2023. Just last week the High Court was hearing proceedings brought by M&S against Aldi over the launch of similar festive light-up gin bottles (see below). We wanted to take this opportunity to walk you through some of the most recent cases, highlighting the positions taken by the claimants and some of the tools brand owners should consider, including registering their products’ shape or get-up as trade marks.

The law on lookalikes

Trade mark infringement and passing off are the key rights used to combat copycats. By way of reminder, a registered trade mark in the UK is infringed by the use of an identical or similar sign in relation to the same or similar goods and services for which the trade mark is registered. Those with a reputation can be infringed by the use of an identical or a similar sign where use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark. In addition, where no registered trade mark exists, brand owners can rely on their unregistered rights to bring a “passing off” action in relation to their goods or services.

Passing off is notoriously difficult to make out as it requires “misrepresentation”  and this includes showing that consumers have been deceived (or risk being deceived) into purchasing the product as a result of the misrepresentation. A complaint about trade mark infringement, on the other hand, is unhelpful where the brand name benefits from a trade mark, but the copycat products imitate the look and feel of the goods and not the name. Copyright in packaging may also be relied on, but only where packaging has been copied exactly, or a sufficiently substantial part of the original packaging has been copied, which tends not to be the case with lookalike products (in contrast with counterfeit goods).

Lookalike vodka bottles

Starting off with Au Vodka v NE10 Vodka, the claimant is the owner of a trade mark for a figurative version of Au79, which is used in the label of its bottle. Au Vodka launched in 2015, starting off as a relatively modest company. They now claim to benefit from an annual budget of £3.6 million and various celebrity endorsements. The defendant, NE10 Vodka, is the owner of a trade mark for the word NE10. They were incorporated in 2021 and launched their own range of vodka in August 2022 in metallic bottles. In response, Au Vodka issued proceedings for passing off and sought an interim injunction to restrain marketing and sale of NE10 Vodka’s products.

This case is rare for being a claim for passing off only. Even though we are yet to get to the main trial, Mr Justice Mellor delved into the law of passing off when weighing up the merits of the case. He distinguished this case from the key case on get-up and passing off, the Jif Lemon case, on the basis that in this case, on the evidence, consumers would notice the difference in the labelling, whereas the labelling on the Jif lemon was discarded or not easily seen (being embossed), leaving the lemon shape to be the key source indicator. Mr Justice Mellor held that, whilst there was a serious issue to be tried on passing off, he did not consider the criteria for granting an interim injunction to be met and instead ordered an expedited trial for January 2023.

Given the similarity between the products themselves, contrasted with the dissimilarity between the trade marks, the claimant relied upon the goodwill it alleged which it had generated in the design features of its vodka bottle. This included its shape and gold colour. The key issue for the court to determine will be whether the product risks deceiving the consumer into believing that it is the same product as that offered by the claimant.

Interestingly, Au Vodka have very recently applied for trade marks for the gold bottle get up. This may be a good way to bolster their case, as it continues to trial, rather than solely relying upon a passing off claim (which will be heavily dependent on the evidence).

Cloudy lemon cider battles

Contrast this with the case filed by the family owned brand “Thatchers” against Aldi in the High Court. Thatchers is claiming trade mark infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 (“TMA”) as well as passing off. It claims that Aldi has intentionally mimicked its cider. From the imagery alone, you can already see a closer similarity between the get-up of the products. What’s more, Thatchers already has a registered trade mark for its get up, which it is relying on (see the left image above).

It is difficult to establish “likelihood of confusion” for trade mark infringement with own brand supermarket products (where consumers know they only sell own brand products). The claimant’s trade mark infringement claim is certainly strengthened by the registration of the cloudy lemon cider’s get-up (its labelling) in addition to the brand name. Even Thatchers itself said in its particulars that TAURUS, considered as a word in isolation, is different from THATCHERS (but then goes on to say that they are similar because they begin and end with the same letters). In its defence, Aldi has denied all claims and rejects any allegations of intentional mimicking, by stating that the alleged similarities are descriptive and non-distinctive. However, Thatcher’s trade mark for its get-up makes this claim much harder for Aldi to defend than a claim in relation to the word marks. Unless it settles, the claim will be heard in 2023.

Percy Pig quarrels

This case concerns another nation’s favourite supplied by M&S (for more fun on this, see our previous article). From their launch in 1993, M&S claims that Percy Pig brought home a UK turnover of over £131 million. See also the particulars of claim for a photograph of someone with a Percy Pig tattoo on their arm (such is their popularity).

M&S has sued Swizzels for trade mark infringement in relation to its “Pigs Mugs” sweets. M&S is the owner of a trade mark registration for the Percy Pig packaging, as well as the 3D shape of its pig like sweets (see image to the left).

The packaging registration is unhelpful here, given Pig’s Mugs are sold in a box. However, the shape registrations have allowed M&S to claim s10(1) TMA infringement as well as in sections 10(2) and 10(3) TMA. They have not even ventured into passing off territory. It is another example of the benefits of having additional trade mark registrations, such as for the shape of the product .

Another interesting aspect to watch out for in this case is the honest concurrent use defence. Given Swizzels have been around for a while (since 1996), there may well be an argument that the public have been educated to distinguish between them.

Gin o’clock

Of course, each IP case hinges upon its particular facts. In the Scottish judgment of Hendrick’s Gin v Lidl [2021] concerning interim injunctions, the claimant had registered the apothecary-style shape of its bottle and diamond-shaped label. Here, the Judge found that there was no prima facie case of confusion or misrepresentation, but this was a case where Lidl intended to benefit from the reputation and goodwill of the trade mark under s10(3) TMA. Again, as in Thatchers, the trade mark registration for the bottle’s get up meant the focus was on the similarity between the overall look of the product, rather than the words HENDRICKS v HAMPSTEAD.

Festive light-up gin rows

Ending our case round-up on a slightly different slant, this case solely focusses on design rights.

In April 2021, M&S filed to register various forms of its festive gin bottle (by way of example, see the above image on the left) which include an integrated light feature, gold leaf flakes, a cork stopper as well as a separate graphic design for a winter forest motif.  M&S (yet again) initiated legal proceedings against Aldi, this time over its festive gin bottle.

Keeping to our festive angle, it was argued that the “informed user” was a UK consumer interested in purchasing liqueur during the Christmas period. M&S submitted that Aldi’s (cheaper) priced design did not create a different overall impression on the informed liqueur purchaser and that the designs were strikingly similar. M&S pleaded that notable importance should be placed the features protected by its registered designs (listed above), including the graphic design’s two-tone effect on the outside and inside of the bottle and its positioning. Aldi claimed that, although their designer did have freedom to choose which images could be placed on the bottle, they were restricted when it came to the gold flakes, the location of a light fitting and the printable area of the bottle. Aldi has denied infringement and claims that the informed user would be able to tell the difference between the gin bottles. Whilst we keenly await judgment (which has been reserved until the New Year), this case serves as a reminder that design rights are also an effective tool to combat copycats.

Takeaways and Next Steps

We’re seeing a marked increase in the number of lookalike product cases in the UK courts, no doubt as result of economic pressures on household budgets creating a demand for cheaper products. What’s more, if we take a quick look to the other side of the Atlantic, the US Supreme Court has also recently agreed to hear an appeal on a significant lookalike dispute between Jack Daniel’s and “Bad Spaniels” (a dog toy company). The decision will require a careful balance being struck between protecting brand owners and recognising the value in commercial (in this case “expressive”) speech. If this goes in favour of the Jack Daniel’s, it could prompt more litigation testing the boundaries of lookalike protection. All eyes will be on the final judgment expected mid-2023.

There’s no doubt that brand owners have various difficulties in enforcing against copycat products. In reality, the majority of cases tend to settle, but with several UK cases currently heading for trial in 2023, we could get several judgments in this area next year. We expect brand owners to come out on top in most of the cases where they have trade mark protection for their packaging (as well as their brand) or have looked to other effective IP rights, such as design rights. Brand owners should consider taking pre-emptive measures now to put themselves in the best position against copycats as we move into a tough trading market.

Please do not hesitate to get in touch if you would like to learn more.

Authored by Joel Smith, Penelope Thornton , and Laura Alvarez Otero.