The Question Of Lookalike Products

Can brand owners get lookalike products off the supermarket shelves?

Q4 2022 has been a period of high inflation, with the nation's favourite budget foods items climbing as much as 17% in price. With the cost of living on the rise, some consumers may be drawn to supermarket lookalike products, which are relatively cheaper than the products that they mimic. In each case, the lookalike product is an obvious competitor and parody of the original product, which invites the consumer to draw a comparison. The question is, does the similar packaging and get-up of the lookalike product deceive the consumer into thinking they are purchasing the original; or that the original is commercially associated with the lookalike?

Brand owners are often irked by lookalike products because the trading and marketing practices of lookalike products make extensive use, take advantage of, and exploit their goodwill in original products. Inevitably, lookalikes have already been the subject of extensive litigation in the UK, including the prominent (i) Moroccanoil v Aldi (Moroccanoil/Miracle Oil) litigation; (ii) M&S v Aldi (Colin/Cuthbert the Caterpillar) dispute; and (iii) United Biscuits v Asda (Penguin/Puffin) litigation.

Can brand owners get injunctions against lookalike products?

If brand owners act quickly upon discovering the lookalike, there may be an opportunity to secure a preliminary (interim) injunction. However, there is a high bar to preliminary injunctive relief. By way of example, in September 2022, AU Vodka Limited (AU Vodka) applied for a preliminary injunction on grounds of passing off. AU Vodka's case was that NE10's vodka bottle was a lookalike of its own product's bottle (i.e., get up).

To have secured the injunction (which *spoiler alert*, they didn't) they needed to persuade the Court that the balance of convenience lay in awarding the injunction. They had to demonstrate that there was a serious issue to be tried and that damages could not be an adequate remedy for the alleged infringement. The court considered all the relevant factors, including the status quo.

Taking account of the facts, the Court found:

• NE10 had invested (and were continuing to invest) considerable resources into the launch of their product, which had gained momentum;
• if it awarded an injunction, distilling slots which had been booked would require postponement, potentially at a cost; employees could be laid off; and
• when it came to NE10's hypothetical (re-)launch, AU Vodka could market to defeat the launch efforts – a loss that's difficult to quantify.

The Court made it clear that the fact that NE10's vodka was already on the market weighed on its decision, as it formed part of the status quo, and the injunction was refused.

Notwithstanding that, would-be brand owner claimants should know that AU Vodka, in bringing this application, secured an early trial date – a strategy often deployed in litigation. The issues will now be heard at the earliest available date in January 2023.

Can brand owners rely on passing off?

Customarily, brand owners depend on passing off when dealing with lookalike products because of the breadth of protection. Brand owners can point to the imitation of the look and feel of their original products, which can also facilitate the capture of an evolving brand image. Brand owners must provide evidence of goodwill, in the UK, in the get-up of their products; which can be a burdensome and expensive feat.

The Court will also consider the context of any alleged misrepresentation. It will be incumbent on the brand owner to persuade the Court that there is consumer reliance on the lookalike's misrepresentation, which damages the brand owner's goodwill. If the lookalike is an imitation product with a lower price point, persuading the Court that consumers will be deceived by the product is difficult. As such, if it's available, evidence of actual confusion can be persuasive.

Should brand owners trade mark their packaging?

Trade marking get-up in the UK (and/or in the EU) is a feasible option. In doing so, similar packaging which brings about a likelihood of confusion on the part of the public would infringe the trade mark. Additionally, lookalike products which take unfair advantage of, or are detrimental to, the distinctive character or the repute of the trade mark could be infringements.

Notwithstanding the above, packaging is often subject to change and a product's get-up can go through various iterations throughout its life-cycle. When seeking to enforce a trade mark, it ought to be borne in mind that the Court will always look back at the register to assess the scope of protection, not the product on the market. Therefore, brand owners seeking to register their packaging will need to give careful consideration as to what ought to be included in the application. If the registration is a simple shape mark registration, the shape cannot:

(i) result from the nature of the goods themselves (i.e., an orthopaedic shaped sole with a V-shaped strap, being a flip-flop);
(ii) be necessary to obtain a technical result (such as the "clutch" of a Lego brick), or
(iii) give substantial value to the goods (such as a decorative item).

Notably, Coca Cola is renowned for having successfully registered the shape of its glass bottle.

The registration will need to adequately portray the brand owner's badge of origin, without narrowing the scope of the protection such that imitations will not be captured. Similarly, the registration cannot be too indistinct, or it may not proceed to register and/or be vulnerable to invalidation.

Recommendations

Get-up can be registered as trade marks through compartmentalisation. If the get-up is important to the brand, protection can be secured for the brand's logo and brand name, as well as the packaging shape and various graphics that may appear. A trade mark action brought together with a passing off claim (instead of passing off alone) could strengthen brand owners' chances of success in a claim for infringement. Increasingly, the Courts are recognising the damage lookalike products can have to the essential functions of a trade mark. In particular, that lookalike products threaten a trade mark's signal to the market that a product is of a certain quality and origin.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.