Shoppers are used to seeing lookalike products on supermarket shelves, but how do the manufacturers get away with producing and selling such blatant imitations? And how do you know if a lookalike product is sailing too close to the wind? Aine Matthews has the answers.
Lookalike or copycat products have been described as products where "distinctive features of a brand's packaging are hijacked in order to trick shoppers into buying something they believe to be that brand, made by the brand manufacturer or sharing the reputation of that brand". Manufacturers of lookalike products obviously do not share this view. They maintain that they are merely increasing price competition which is to the advantage of the consumer.
The main legal remedies available to brand holders to prevent the sale of lookalike products are those of trade mark infringement and passing off. Other reliefs exist under copyright, design rights, the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 and the Consumer Protection Act 2007. However, we will concentrate on trade mark infringement and passing off.
Essentially (and without delving into the legal niceties), it must be shown that a consumer is likely to have been confused or misled. These remedies, particularly trade mark infringement (which requires that the brand, product shape and/or packaging are registered as trade marks), are excellent remedies for the brand holder when there is actual or probable consumer confusion between the premium brand and the lookalike product. 'Passing off' is a remedy used by brand holders that have acquired a reputation and goodwill in their product in a territory through extensive sales but who have not registered the name or the packaging of their product as a trade mark. Passing off protects unregistered trade marks. Trade mark law protects registered trade marks; passing off is usually more difficult to prove than trade mark infringement, which is the reason that brand holders are advised to register their brands and packaging as trade marks.
Some cases in relation to lookalikes have been considered by the Irish courts over the past few years and the decisions are never foregone conclusions.
Irish Distillers Limited v Cooley Distillery plc
This case, in July 2008, concerned lookalike bottles of whiskey. The plaintiff's whiskey was marketed under the brand name 'Jameson's' and the plaintiff had secured registered trade marks for the label of its whiskey product. The defendant marketed its whiskey under 'St Patrick's'. The court found both trade mark and copyright infringement on the basis that the labels were substantially similar even though both products had prominent and very different brand names. This would be considered to be a very favourable decision from a brand holder's point of view. The decision was not appealed as the parties reached an ultimate settlement.
Jacob Fruitfield Food Group Limited v United Biscuits (UK) Limited
This 2007 case dealt with an interlocutory injunction application in respect of lookalike biscuit packaging. An interlocutory injunction was granted in respect of the lookalike packaging for the fig rolls biscuits. In this case, no exclusivity was asserted in respect of the colour of the packaging, which was red. The case did, however, turn on the size and prominence of the brand name, Jacobs/McVitie's on the packaging. The court found that there was a serious issue to be tried in terms of whether passing off existed as regards the original packaging and the lookalike packaging. In the same case involving a cream crackers product, an injunction was not granted on the grounds that the court was of the view that the prominent display of the brand names differentiated the products, even though the colour scheme of the packaging was identical.
These cases show that there is really no clear-cut position when it comes to lookalike products. However, they also demonstrate the importance of having a registered trade mark for the brand name and also for the packaging. While the Jacob Fruitfield case did not involve trade marks, Jacobs did have significant reputation and goodwill in the fig rolls biscuit packaging. It is fair to say that had the packaging been registered as a trade mark, Jacobs may well have had an easier case rather than having to prove its reputation and goodwill.
Manufacturers of lookalike products will sometimes encounter turbulent waters and hit the rocks, but sometimes it may be plain sailing. One thing is clear: they should have a clear understanding of the lines drawn by the law and the rights of brand owners before deciding to launch a lookalike in the Irish market.