EU law helps firms see off ‘copycat’ brands

Manufacturers seeking legal redress against firms producing ‘copycat’ or rip-off versions of their brands are in a stronger position following a recent European Court judgement, according to trademark lawyers.

There have been several skirmishes in recent years over products that mimic major brands. However, it had often been difficult for brands to seek redress under ‘passing off’ or trade mark legislation, claimed Alison Bryce, partner in the intellectual property law team at Maclay Murray & Spens.
Similarly, in cases where ‘copycat’ products were developed by major supermarkets, many brand owners were in a difficult position because they risked commercial suicide if they took on major customers, she added.
However, a recent ruling over copycat perfumes at the European Court of Justice (L’Oréal v Bellure, 2009), has strengthened the rights of brand owners and set an interesting legal precedent, claimed Bryce.
In its ruling in favour of L’Oreal, the ECJ clarified that in some circumstances, the brand owner (ie. L’Oréal) “need only establish that the copycat branding creates a link in the mind of the consumer to the trade mark, and thus takes unfair advantage of its reputation”, said Bryce. “This is very favourable to brand owners and provides much-needed clarification to this aspect of trademark law.”
The ruling also demonstrated that successful action against trademark infringement did not depend on the likelihood of ‘confusion’ among consumers or ‘damage’ to the trademark. It should therefore make it easier for owners of well-known trademarks to bring successful actions against manufacturers of copycat products, Bryce claimed.
“It’s actually saying that as long as you can show that the copycat product creates a subliminal link or association in the mind of the consumer with the established brand, there is potentially a case,” she said. “They simply have to show that the copycat is attempting to ride on the coat tails of the big brand.”
The more strongly the registered trademark was brought to mind by the copycat packaging, the more likely that it was taking “unfair advantage” in legal terms, according to the ruling, Bryce explained.

The recent dispute between Diageo and Sainsbury, in which the latter agreed to make minor changes to its ‘Pitcher’s’ drink after Diageo launched legal action for trademark infringement, demonstrated that brands were starting to gain confidence, she said. However, as a multi-national drinks company, Diageo clearly has more leverage with a supermarket than a smaller brand, she acknowledged.
“What was unusual about this was that we actually know about it. Most cases like this never make it into the public domain and are settled privately.”
Alistair Gay, a partner at patent and trade mark attorney Keltie, added: “The precedent set by the ECJ ruling does strengthen the hand of bigger brands. But if you are a smaller brand and a supermarket copies your product, there is still the issue of whether you want to take on your own customer.”