When Do Imitation Products Infringe Trade Mark Rights?

business trade mark

The short answer is, often a ‘lookalike’ product will not infringe trade mark rights. In some circumstances, they may infringe other rights belonging to the trade mark owner.

Queries often arise with regards to copycat brands and trade mark infringement, with many people wondering why and how these more affordable knockoffs appear to get away with obvious imitation.

The fact is that many retailers which market these lookalikes are well-versed in the complexities of intellectual property law and they understand the boundaries of infringement.  There is also a clear difference between a lookalike product and a counterfeit.  Essentially, the manufacturers of lookalikes generally avoid infringing on a trade mark’s rights by ensuring that their products feature brand names (trade marks) that are not deceptively similar and that they don’t mislead or confuse the consumer.

That said, there have been and currently are, examples of legal cases involving both alleged and proven claims of infringement (of either trade mark rights or common law rights), but the reality is that the majority of products that emulate another brand’s offerings are legitimate and within the realms of IP law. 

What constitutes trade mark infringement?

Jacqui Pryor, founder of MMW Trademark Services, explained in a previous post that trade mark infringement was ‘the violation of the exclusive legal rights attached to a registered trade mark without authorisation from the trade mark owner’.   (You can read her full article here on the basics of trade mark infringement).

Broadly speaking, a product will be deemed to have infringed on someone’s trade mark’s rights if:

  • Its brand name is deceptively similar to the registered trade mark
  • The goods or services offered under the infringing trade mark are the same or similar to those covered by the registered trade mark
  • The public could be confused as to the origin of the product

In addition to trade mark infringement, in certain circumstances ‘copycat’ products could breach the common law rights of another business, for example when:

  • Aspect of the product packaging is identical to that of another brand such that consumers may be misled or deceived to believe there is an affiliation between the two (2)
  • The product is ‘passing off’ as another brand (ie when the other brand has a reputation and there is a misrepresentation made as to some connection between the two (2) and the other brand’s reputation is likely to be damaged by that misrepresentation)

To the general public, it may seem that some companies are getting away with selling items that mimic established (and pricier) brands.  It’s often patently clear to shoppers that a product has been inspired by another brand – but the point is that that product isn’t actually being confused with another nor is it misleading consumers into thinking it is the actual product of the brand.  Consumers aren’t being ‘duped’.

The key point is that any smart trader, be it a multinational organisation or a small, independent operator, will get professional advice upfront from a trade mark expert to ensure that they’ve understood the IP rights of another business and their intended goods aren’t infringing on those.  In the same vein, expert advice will ensure that their own IP rights are fully protected.

Examples of legal claims of trade mark infringement with regards to alleged copycat products

Let’s look at some prominent cases involving alleged infringement of trade mark rights to illustrate just how complex this area of law is – and how crucial it is for traders to know the IP rights of others (and to establish their own trade mark rights) before launching any new product or instituting legal proceedings against someone else. These examples involve Aldi Stores Pty Ltd, who consumers often recognise as selling products imitating others. It is clear Aldi seeks solid advice and has a good understanding of what may be lawful inspiration/imitation.

Aldi Cheezy Twists Case

In 2001, US snack food giant, Frito-Lay sued Aldi over its cheese flavoured snack, Cheezy Twists which Frito-Lay claimed was transgressing the rights of its established brand, Twisties.

Aldi won the case on appeal, with the court finding that although Aldi’s snack was deliberately targeted at the Twisties market, it did not ‘deceive nor cause confusion’ amongst shoppers as the name was not similar to Frito-Lay’s registered trade mark.

An important point to note about this case was that the court was not asked to examine the Cheezy Twists packaging (including colours and design) because Frito-Lay had limited its case to a trade mark infringement claim.  The court only compared the two brand names.

Aldi Moroccanoil Case

In 2015, Moroccanoil Israel Ltd (MIL) sued Aldi for alleged trade mark breaches and passing-off of its Moroccan Argan Oil haircare products.

Aldi successfully defended the case on appeal as the court found that there were sufficient differences between the products in question for Aldi to avoid trade mark infringement or passing off. 

Aldi Charlotte Tilbury copyright case

In another case, Islestarr Holdings Ltd, owner of the ‘Charlotte Tilbury’ makeup brand took Aldi to court in the UK over an allegation of a breach of copyright.  It was claimed that the Lacuna Broadway Shape – a powder palette under Aldi’s private label ‘Lacura’ cosmetics range – was strikingly similar to Islestarr’s Charlotte Tilbury’s ‘Filmstar Bronze and Glow’ palette.  

The High Court judge found that the similarities between the Charlotte Tilbury product and the Aldi product were substantial.  The claimant was successful primarily because their case didn’t rely on ‘passing off’, but instead focused on the specific intellectual property rights of the Charlotte Tilbury palette in terms of copyright and the similarities between these protected elements and the Aldi design.

Aldi Thatchers Cider case

Another recent case, Thatchers Cider Company vs Aldi, serves as further illustration of how and why imitation products can circumvent trade mark law.  It also highlights the vital need for watertight legal protection for brands.

In this case, the cider producers claimed that Aldi had infringed their trade mark rights and engaged in passing off with regards to their cloudy lemon-flavoured ‘Taurus Cider’.  They claimed that Aldi’s packaging was deceptively similar to their own, causing consumer confusion.  They also claimed that the supermarket giant was taking unfair advantage of their established reputation and that the existence of the similar product would damage this reputation.

The court ruled in Aldi’s favour, saying that Thatchers hadn’t fully established either consumer confusion, unfair advantage or reputational harm.  Interestingly, Aldi acknowledged that their inspiration for their Taurus cider came from the Thatchers product and that it was used as the benchmark for their product development.  

Aldi Little Bellies case

This ongoing copyright case in which Hampden Holdings has claimed that Aldi has infringed the IP rights for its children’s organic snack food brand, Little Bellies with the supermarket giant’s ‘deceptively similar’ range of fruit and vegetable puffed snacks.  No decision has been issued in this case, but, there is no doubt the outcome will be interesting.  

What do these cases mean for retailers and lookalike brands in terms of legal rights?

A key takeaway is that these cases highlight the importance of doing thorough due diligence and a comprehensive trade mark search before making any investment in developing a brand identity.  The choice of brand name is crucial. 

Retailers and product developers have become extremely savvy in terms of staying on the right side of the legal line in terms of lookalike products, and consumers are not easily duped.  Private label products that are inspired by established brands may remind people of a certain item without misleading them or eroding that established brand’s reputation.

The rapid rise – and rapidly changing landscape – of global e-commerce has also made it extremely challenging for independent brand owners to keep track of their intellectual property.  Online retail platforms like Temu, Amazon and Shein have often been accused of infringing small business owners’ rights, but as evidenced by the cases above, asserting those rights is not always straightforward. 

Getting good advice from an experienced trade marks professional is essential and the best scenario is to have your legal rights entrenched through trade mark registration prior to launching any new product.  That will ensure that your brand is protected as well as protecting you from infringing on the rights of others.

If you need support or guidance in terms of brand identity and protection, you’re welcome to contact MMW Trademark Services via our website or by phone on 03 8288 1432.  Our experienced trade marks attorney, Jacqui Pryor, has decades of experience in this field of law and she’s always available for an obligation-free chat.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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