How to Protect Your Business from Copycats and Protect Your Brand

The key hallmark of a ‘copycat’ product is one which has the same shape, colour or design of a well known brand but without a brand name. They can be distinguished from counterfeit products, which generally also include the brand name. Copycat products can pose a significant threat to brand owners and are often much more difficult to defend against than their counterfeit cousins but protection is still available and there are a number of different ways in which brand owners can seek to protect their products.

Registered vs. Unregistered

The strongest protection against look-a-like products comes in the form of registered rights. The main advantage of obtaining a registered right is that it gives the owner something tangible; conclusive evidence of the owner’s rights in respect of the brand name, design or feature against which registration has been made. Unregistered rights in contrast require the brand owner to prove his entitlement to those rights before they were exploited by the copycat.

Registered Rights

Trade Marks

The main registered right available is a trademark, registrable as word marks, logos or both. Obtaining a registered trademark enables the owner to make a stronger claim against copycat products under three different grounds:

  1. Where a mark is identical to the registered trade mark and is for identical goods or services.
  2. Where a mark is similar to the registered trade mark for similar or identical goods or services. This also requires the owner to show there is a likelihood of confusion between the registered mark and the infringing mark. This is often difficult to prove with copycat products as consumers are often not confused; they are aware that they are buying a cheaper product.
  3. Where a mark is identical or similar to the registered trade mark for any kind of goods or services. This is by far the broadest ground, but requires the registered owner to prove that it has a reputation which the copycat product is taking unfair advantage of or causing detriment to.

Community Harmonised Designs

Another registered right available to brand owners in defence against copycat products is Community Harmonised Designs. This right relates to 2D and 3D designs and can protect surface decoration. The key infringement test is whether the lookalike product gives the same or a different overall impression to the informed user.

Unregistered Rights

In an ideal world, unregistered rights should be treated as a fall back to registered rights. However, it is not uncommon for brand owners to forget to apply for or to renew their registered rights or simply do not realise that they need to follow a registration process in order to gain the protections referred to above.

Passing Off

This requires the brand owner to demonstrate some form of confusion, which can often prove difficult in cases involving look-a-like products. Those alleging passing off often resort to obtaining survey evidence in order to show the confusion between the copycat product and the product in question. However, Courts can be very critical of this and will look carefully to see whether there are any weaknesses in the way in which the survey has been carried out.

There are a number of different rights available to brand owners who are looking to protect against look-a-like products. For advice and assistance on identifying and protecting the intellectual property in your brand and wider business interests, please contact John Pickervance in the Business Law Department by telephone on 0800 037 4628 or via our Contact Form.

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