The consequence of the ruling, made last autumn after a year-long consultation, is that brand owners will not be given direct rights of enforcement under the Consumer Protection from Unfair Trading Regulations 2008.
Sarah Conroy, associate at law firm Weightmans, said BIS’s stance had “clear and far reaching implications” in light of the inexorable rise of retailers’ own-label products and budget brands.
“With this lack of change to the law, brand owners and manufacturers are left with their hands tied, placing heavy reliance on the ability of trade mark registrations to provide adequate protection,” she said.
Barney Sich, associate at law firm Osborne Clarke, said the move clearly favoured supermarkets over brand owners, and “direct rights to challenge copycat packaging or lookalike products are as far away as ever”. However, he added: “The conclusions reached clearly demonstrate the importance of a well-managed trade mark portfolio.
“Careful forward-planning to identify and file the right registrations – including for marks covering the design of packaging (where possible) – remains the best strategy for brand owners.”
He cited the example of Icelandic Seachill, which successfully prevented Aldi from selling an own-label brand “confusingly similar” to that of its brand, The Saucy Fish Co. Although that case did not go to trial, Aldi reportedly agreed to a court ordered interim injunction on the basis of infringed registered trade marks.
‘Strongest form of protection’
Mark Armitage, Trade Mark Group consultant at law firm Withers & Rogers, said trade marks remained the strongest form of protection against copycat brands, “and not just trade marking the words, but the whole layout”.
“It can be quite expensive for smaller brand owners, especially if they are to change their packaging very frequently. But in comparison to the process of litigation, the cost of registering a trade mark isn’t hugely expensive,” he said.
“It’s also worth remembering that the act of ‘passing off’ can still be a powerful weapon, as it’s a very flexible law. While a passing off action can be quite expensive to mount, sometimes the threat of litigation alone might be enough to rectify the situation.”
However, Conroy said that while passing off provided a potential cause for action without the need for any official registration, “this may be difficult to pursue due to the requirement to produce evidence that a proportion of the public would be confused or deceived into believing the copycat product is a product of the brand owner”.