Alison Bryce

Last year, high-end gin company Hendrick’s was successful in seeking an order that forced Lidl to stop selling less expensive own-brand gin whose packaging closely resembled that used by Hendrick’s. However, the most significant recent copycat branding cases don’t involve a store-brand product allegedly copying a name-brand product, but one store-brand allegedly copying another.

The test for trade mark infringement is laid out in statute (s.10, Trade Marks Act 1994) which provides that infringement of a registered mark occurs when, in the course of trade:

An identical sign is used for identical goods or services, or for similar goods or services and there is a likelihood of confusion by the public; A similar sign is used for identical goods or services and there is a likelihood of confusion by the public; or A sign takes unfair advantage of the reputation of a well-known trade mark.

In recent cases, brands bringing trade mark infringement proceedings rely on the last part of the test – based on a trade mark’s distinctiveness and reputation. To successfully argue this, the claimant must show the trade mark has a reputation within the relevant market. It will also have to show the other party’s product is sufficiently similar and takes unfair advantage of, or is detrimental to, the distinctive character or reputation of claimant’s marks.

In the caterpillar cake case, it was argued that the supermarket’s product took unfair advantage of the reputation of a well-known trade mark.

Perhaps the most interesting aspect of these cases is that trade infringement is not at the forefront. Yes, the claimant brings allegations of trade mark infringement against the defendant, but the primary cause of action appears to be ‘passing off’, which deals with unregistered rights. (Trade mark infringement deals with registered rights).

The underlying principle of passing off – that “a man is not to sell his own goods under the pretence that they are the goods of another man” – goes back to Perry v Truefitt, 1842. For a name or mark to be protected by an action in passing off the public must rely on it, in that they recognise it as representing the quality or character of the goods of one trader.

To successfully argue passing off, the claimant must meet the criteria laid out in the three-part test (as described in Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12):

They must prove they own goodwill or reputation in the relevant goods/services; they need to show that misrepresentation and confusion have resulted from the presence of other party’s product, such that the public are likely to believe the other party’s product is in fact the claimant’s product; and they must demonstrate that there is a likelihood for damage caused by the other party’s misrepresentation.

Passing-off offers claimants a broader scope of protection than trade mark infringement as they can point to aspects of the product not protected by registered rights and argue good will and public reliance.

What is clear is that copycat branding cases bring publicity and are often played out on social media long before courts can opine. This was best demonstrated in 2020 when media-savvy Brewdog tweeted Aldi playfully suggesting they collaborate on a craft beer after spotting the supermarket stocking a canned beer eerily similar to the well-known craft beer’s branding. The result? A limited-edition collaboration that brought profits and publicity for both parties.

Taking to social media can allow the brand to explain to consumers why they should buy the genuine article. However, it can shift the battle from the courtroom to Twitter.

These cases show there is often a power imbalance between retailers and suppliers. Interestingly, the Grocery Code Adjudicator is limited to enforcing their statutory powers only and intellectual property is not yet included in their remit. Perhaps this change would improve regulation in this area, which could benefit retailers and suppliers alike.

Alison Bryce is a partner at Dentons. This article first appeared in The Scotsman.