A recent High Court decision has implications for “look-alike” products which are deliberately designed to mimic the style of leading brands.
A look-alike product generally copies significant features of a competing product’s get-up, such as colour scheme, design elements and overall appearance. Creators of look-alikes try to achieve a product which looks as much like a leading brand’s product, without infringing the leading brand’s intellectual property rights.
Copying in itself is not an infringement, but copying a specific product feature which is the subject of a trade mark is. There is also a risk of ‘passing off’ action, where the elements copied are likely to mislead the public into buying the look-alike product rather than the real thing.
Often, the only element which sets a look-alike apart from the product which it is mimicking, is the brand name. There’s a general assumption that if the brand name is sufficiently different, it will be difficult for a trade mark or brand owner to bring a successful legal challenge for trade mark infringement or passing off. A distinctive name certainly makes it more difficult to show that the public are likely to be confused into associating the lookalike product with the real thing, or indeed as often happens, mistaking the lookalike product for the real thing.
The decision in Irish Distillers Ltd v Cooley Distillery Public Limited Company illustrates, however, that even where a lookalike product is clearly branded with a name that is quite different from the brand that it is copying, this may not be enough to defend an application for a temporary injunction where the overall visual impression is very similar.
In the Cooley case, Irish Distillers, which produces Jameson, was granted an injunction preventing Cooley Distillery from using labels on their St Patrick brand which were so similar to Jameson labels as to lead customers to believe that St Patrick whiskey was actually part of the Jameson family of products.
St Patrick was distributed in Russia by Rotor House, but never distributed in Ireland. The marketing material instructed the St Patrick product to be placed on the shelves next to Jameson, but with a retail price that was 18% lower.
Irish Distillers claimed that Cooley Distillery had infringed its trademarks and the copyright it owned in the label of Jameson whiskey and had passed off its goods as being those of Irish Distillers. Cooley, on the other hand, claimed that the differences between the product labels were such that no one could be confused between the two. In particular, one trademarked label clearly depicted ‘Jameson’ and the other ‘St Patrick’.
The court determined that the overall visual impression given by each label was similar despite the difference in the product name, which was clearly distinctive in lettering, connotation and phonetics. It accepted that there were differences in the representations of the emblem and the coat of arms on each label and that there was no similarity between the ‘St Patrick’ and ‘Jameson’ names, therefore no degree of confusion between the verbal elements of the names.
However, these differences were not enough to overcome the general visual impression of similarity. The court held that if it was examining the differences in the context of the bar trade (which would require verbal use of the brand name or mark) then no passing off should occur, but in the context of retail sales, where a customer was selecting the product from the supermarket shelf, then there could be confusion because of the similarity of colour and other features of the label.
The court took into account the opinion of two practitioners in the Russian marketplace – they believed that the different verbal designations in the names of the products would not reduce the risk of confusion, given the other substantial similarities between the labels. There was also uncontroverted evidence of confusion occurring where Jameson was ordered and billed but St. Patrick was served. Further evidence of confusion was shown in the form of a photo provided by a distributer to Irish Distillers, which included the St. Patrick product in the Jameson range. The court concluded, on balance, that there was a likelihood of confusion on the part of the public between the two labels and granted the injunction.
This decision highlights the risk of a court restraining the sale of a lookalike product even where the lookalike features a highly distinctive trademark element or brand name of its own, where the product appearance is similar and the method of consumer choice could lead to confusion.
From a brand owner’s perspective, this decision may make it easier to bring successful temporary injunction applications in respect of lookalike products going forward. For those designing lookalike products which will be sold on supermarket shelves, care must be taken that including a distinctive brand name is not the only distinguishing feature they rely on.