Following on from the counterfeits article, we take a look at a related issue that has been in the news recently – copycat products. There has been a rising number of court cases involving established brands and copycats raising questions as to what brands can do to stop this from happening.
What are copycat products?
Copycat products are imitations of a well-known product. The copycat product takes the look and feel of the original product and can mislead consumers into believing it is the actual product or shares the same qualities. Often the copycat product is offered at a cheaper price.
In the United Kingdom, the most familiar examples of copycat branding occur on own brand food and household goods in supermarkets. A high profile case involving Asda's own Puffin bars and Penguin bars drew attention to copycat products and since then it has become a common sight for shoppers. The aim is to 'piggy back' on the reputation of the established brand and create an association in the consumer's mind with the original product. This is done through mimicking the shape, colours, design placement of the established product.
The difficulty with copycat products is that they fall within a legal grey area. Unfair competition is not a cause of action in the United Kingdom. Lookalikes must be reviewed on a case by case basis to determine whether or not they breach the intellectual property rights of the original product's owner. The bar for successfully claiming infringement of a trade mark, design right, copyright infringement or passing off is set high and companies put significant resources into ensuring product designs sail close enough to the wind without falling on the wrong side of the line. Product features such as font styles, colours and shapes are hard to trade mark or register for design rights and it is rare to see brand owners claim copyright protection for products.
Due to this uncertainty, there is no established system in place for spotting/reporting copycat products. Consumers are increasingly aware of copycats and often see it as fair competition. There is a misconception that by changing or adapting a products design to remove a number of elements, there is no possibility of infringement. Brand owners are left with word of mouth or store visits as a means of identifying copycats that they can take action against.
One of the striking aspects of the recent dispute involving M&S and Aldi over Aldi's imitation of Collin the Caterpillar Cake was Aldi's use of social media. Aldi regularly posted about the case on social media making light of M&S's complaints and drumming up support from followers online. This feeds into the idea overall that brand owners have to balance the desire to protect the investment made into a product with the risk of attracting unwanted bad press from those who perceive it as aggressive anti-competitive behaviour.
Tackling the problem
Brand owners should think creatively in the fight against copycats. It is commonplace for brands to register names and logos as trade marks but copycat products often nullify this by changing the name and using a different logo on lookalikes. There are advantages to applying to register distinctive product shapes and designs, as well as colours, especially if they have come to be associated with the product by consumers. For example, M&S have registered the packaging for Collin the Caterpillar. This has to be balanced against the cost of registration so it may not be logical for all products but it could make the difference in a court battle. The overall appearance of the product may also be eligible for registration as a registered design.
It is crucial that brand owners identify the IP rights existing in products and enforce them. If an action for trade mark infringement and/or passing off is difficult consider a claim for copyright. In 2019, Islestarr were successful in claiming that Aldi had breached the copyright in original artistic works featured on the packaging of Charlotte Tilbury makeup. This case demonstrates that brand owners with unique packaging or product design can use copyright to prevent copying. It is not realistic to take on every copycat product and brand owners should be wary of which battles they pick but choosing the right moment to take action can be an effective deterrent.
Using social media and the internet to boost a products visibility and emphasise its uniqueness would also be a valuable strategy. The stronger a consumer associates a particular packaging cue with a product, the easier it will be to claim goodwill or brand identity exists and prevent copying. Social media evidence has been used in court before to demonstrate the publics perception. This would also provide a means for consumer's to report copycats they think infringe a brand owner's IP rights.
Utilising technology is also key – there are a number of providers who can search for copycat products and this can help identify the key players.
Until legislative change, brand owner's should have a comprehensive plan in place for dealing with copycats.