“Imitation is the sincerest form of flattery.”

Or so the old adage goes. But try telling that to a manufacturer whose product has just been ripped off. It’s the ultimate irony – just as your product is gaining traction and recognition in the market place, a new front opens up in the battle for market share, this time to stop competitors and discount supermarkets riding off the back of your hard-earned success with a copycat product.

But what can you do to combat this threat to your sales and brand? And where’s the line between fair competition and outright copying? This article looks at the tough challenges faced by food and drink manufacturers and suggests some practical steps to help you stay ahead of the game.

Those were the days…

In the past, manufacturers relied largely on “passing off”, based on the goodwill in their name or get-up and the damage that would be caused by the copycat. There have been numerous passing off cases involving food and drink, the two most famous being a copy of Jif Lemon’s squeezy bottle[1] and United Biscuits’ Penguin biscuit seeing off Asda’s Puffin[2]. Other cases have protected Parma ham[3], Advocaat[4] and Swiss Chocolate[5].

However, passing off has always had its limitations. For example, it’s of little use in protecting brand new products/packaging since you need sufficient sales to generate the requisite goodwill. More importantly, passing off requires some kind of misrepresentation (unlike unfair competition law in mainland Europe), i.e. you need to show that consumers are confused, for example mistaking one product for the other, or thinking that one product is authorised or licensed by the maker of the other. But today’s consumers are increasingly savvy; they expect and indeed demand competing products and are not usually confused when they see imitations of big brands. This is how the hair oil product on the left was held not to be passing off in respect of the product on the right, even though there was found to have been copying[6]:

Click here to view the image:

So where does that leave us? Well, the good news is that all is not lost. It does however require a much more creative strategy if you’re to beat the copycats, by adopting a proactive “pick ‘n’ mix” approach to registered and unregistered trade marks, designs and copyright.

What does the pick ‘n’ mix look like?

Happily, you have a whole suite (or sweet) of intellectual property rights available to you, each with its own advantages and limitations, and it’s a question of picking the right mix at the right time, to maximise your protection.

Looking at unregistered rights first:

(1) Unregistered design right

This is often over-looked as the poor man of IP but it can be a powerful weapon, especially for products/packaging which are likely to be short-lived and hence not worth the cost of registered protection. UDR arises automatically and in its UK form will protect the shape or configuration of objects (NB not 2D designs such as surface decoration), lasting for 10 or 15 years depending on the circumstances. Until Brexit takes place, it’s also worth considering (European) Community UDR which can protect a much wider range of designs than its UK cousin, but which lasts for only 3 years. The main limitation of both UK and Community UDR is that they require actual copying to have taken place (you can’t challenge independent creation), although that is usually not an issue with copycat products.

(2) Copyright

This can also come in handy, especially for protecting logos, imagery and other creative aspects of your packaging. However again, and as the name would suggest, you need to show active copying, not just that the later product was “inspired” by the earlier one, which can cause problems with enforcement. Ownership can also be an issue, since companies often mistakenly assume they own the copyright as the “commissioner”, when it is actually the advertising or design agency that owns the rights unless (a) there’s a suitable contract in place or (b) there has been a positive assignment to the company.

(3) Unregistered trade marks or goodwill (“passing off rights”)

As above, these arise through the use of a trade mark or get-up in the UK, but the sophistication of today’s consumer can make it harder to enforce these rights. It can also be tricky to show goodwill in the specific feature that’s been copied, when so many features appear in combination in the original product. Colours, shapes etc. can be particularly hard to protect, since consumers typically rely more on the name of a product than on other elements of the get-up, and copycats will often play a clever game, deliberately using a different name while still using a very similar get-up.

So, unregistered rights can certainly be useful but they do have their limitations. They are also inherently more nebulous and usually harder (and hence more expensive) to enforce than their registered cousins. It’s therefore always worth considering these too, especially for longer-running products/packaging where up-front financial investment is more easily justified:

(4) Registered designs

These are quick, easy to register, relatively cheap and can be a particularly powerful weapon against copycats. They last for up to 25 years (renewable at 5 year intervals) and protect any aspect of the whole or part of your product or packaging, including its appearance, shape, texture and decoration. The most common mistake is the failure to think about designs early enough, since applications cannot be filed after the expiry of the 1 year “grace period” which starts after the design is first made available to the public.

(5) Registered trade marks

These can be filed at any time, can be renewed indefinitely and can protect any aspect of a product or its packaging provided it is seen by consumers as a sign of origin. Usually this will be a name or logo but it could also be the label, shape, colour or even the smell of a product. Registered trade marks are therefore very flexible and can be an excellent long-term way to stop copycats, especially since they protect not only where there is confusion (as with passing off), but also where there is no confusion, provided you can show your mark has a reputation and the later product involves an element of unfair advantage or detriment. This kind of “free-riding” is of course common with copycats. The hardest part is often securing protection for the right mark in the first place; names and logos are usually fairly easy to register, but it’s much harder to show that consumers rely on “non-traditional” marks such as colours or shapes as indicators of origin. Registration may still be possible if you can show “acquired distinctiveness” as a result of substantial use, but again this can be hard if the mark applied for has always been used together with a name or logo. This has been a key feature of the ongoing “Chocolate Wars”, where Nestle has tried to stop Cadbury registering the colour purple[7] and Cadbury has challenged Nestle’s registration for the shape of their KitKat bar[8].

Top take-aways to beat the copycats

  1. Mix and match: Be creative and don’t rely on just one IP right – instead, try to build a fortress of different rights around your product and packaging, making life as hard as possible for the copycats.
  2. Build good internal comms: Make sure your marketing, R&D and legal people work closely together as products/packaging are developed, so you know what is being developed, when it’s being launched and how products are performing. This will keep your options open and help you to make the right decisions at the right time.
  3. Remember to file designs: These can be a real jewel in the crown but they’re often forgotten. Consider designs early on in the process and make sure any deadlines are monitored by you or your attorneys.
  4. Be proactive but pragmatic: Some options might not be open to you right away, but doing something (even if imperfect) is often still better than doing nothing. For example, filing a combined word + get-up trade mark application early on can still act as a deterrent, even if you can’t register your “ideal” pure get-up trade mark until a bit later when you have more sales to back it up.
  5. Actively promote the key features of your product/packaging: Educate consumers about what’s different or unusual about your product or its appearance, so they come to associate that feature exclusively with you. And make sure you document your marketing, adverts, prizes etc., as this will help with both protection and enforcement down the line.
  6. Think ahead to exports: What you can protect will vary by country, so even if you can’t protect something in your home market, it’s always worth asking again for different countries if exports will be key to your business.

Cases

1 Jif Lemon – Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491

2 Penguin Biscuit – United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513

3 Parma Ham – Consorzio di Prosciutto di Parma v Asda and others [2004] ETMR 314

4 Advocaat – Erven Warnink B.V. v J. Townend & Sons (Hull) Ltd [1979] AC 731

5 Swiss Chocolate – Chocosuisse Union Des Fabricants Suisse De Chocolat and Others v Cadbury Limited [1999] RPC 826

6 Moroccan Hair Oil – Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686, [2014] ETMR 55

7 Cadbury’s Purple – Société Des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174

8 Nestle’s KitKat bar – Nestlé v Cadbury [2016] EWHC 50 (Ch)