Part 2 in this series of articles on legal issues of relevance to the cosmetics industry looked at counterfeit products and ways to tackle them. This Part 3 looks at a slightly different issue that is becoming an increasing problem in the cosmetics industry—the rise of “superstar” beauty products and social media make-up stars with their own cosmetic lines: so-called “lookalike,” “dupe,” or “copycat” products which look highly similar to that of another brand but that aren’t close enough to be considered true counterfeits.
There are a plethora of articles comparing beauty dupes to their original counterparts and showing beauty lovers how to make cult products accessible on a not-so-high-end budget.
As with previous articles, this article aims to highlight relevant issues, but should not be considered an exhaustive review of the world of counterfeits and lookalikes, nor should it or any of the points made in it be considered legal advice. It will also focus on the UK or EU legal position but will make reference to other jurisdictions.
How are lookalikes different from counterfeits?
Lookalikes are slightly different from counterfeits (see Part 2) and can be trickier to take action against. There is no set (legal) definition of lookalikes, in the UK at least, but there are certain common features:
- Lookalikes won’t make use of trademarks or, if they do, they will make use of them in such a way that is unlikely to result in a clear case of trademark infringement.
- Lookalikes will often be found in supermarkets and stores where you can purchase a whole new outfit for a few pounds or dollars. They are a way for companies to tap into the zeitgeist and offer consumers a cheaper version of a hot product or a long-established, much-loved item.
- Lookalikes may imitate features of the original product (such as colours, logos, shape, packaging materials, wording) and will be in the same product category.
The UK Intellectual Property Office in 2013 published a report entitled “Impact of Lookalikes: Similar Packaging and Fast-Moving Consumer Goods” which defined “a lookalike” as
“… a product sold by a third party which looks similar to a manufacturer brand owner’s product and by reason of that similarity consumers perceive the lookalike to share a greater number of features with the manufacturer brand owner than would be expected by reason of the products being in the same product category alone.” While the report found that consumers had a mixed perception of lookalikes and saw benefits as well as disadvantages, brand owners viewed lookalikes negatively and as a cause of lost sales.
Lookalikes have long been a feature of high-street fashion stores that produce copycat versions of outfits seen on runways often only hours previously. The rise of social media has resulted in a much-reduced window between items appearing on runways and appearing in-store or online and available for purchase, and the trend is extending to cosmetics. Often the main concern when it comes to lookalikes is not that consumers will confuse the lookalike for the original product but that consumers will falsely associate the lookalike with the original product, which could result in the strength of the original brand being “diluted,” and the lookalike may not meet the same quality standards.
How do I deal with lookalikes?
It is not possible to adopt a prescriptive approach when it comes to lookalikes. Every instance will have to be taken on a case-by-case basis, as the party responsible for the lookalike will likely have taken a very careful approach to avoid obviously infringing IP rights. This is not to say, however, that all lookalike producers have done so successfully or even tried to at all.
Below are some possible types of IP rights that may be used when taking action against lookalike products. Each basis of claim presents its own challenges and has its own set of requirements (see Part 1 for more detail), but if available, may be a starting point. The need to approach each lookalike on a case-by-case basis is what makes it so challenging to take action against this type of issue.
- Depending on the appearance of the lookalike product and the use made of any trademark registrations or applications, an action based on trademark infringement may be helpful. The particular difficulty with actions based on trademark registrations is that due to the fact they provide the trademark owner with a monopoly, the scope of protection they provide can be limited. Trademark registrations for product shapes or colour combinations, for example, can be more useful than word marks when it comes to taking action against lookalikes (the lookalike may not use the brand name but may borrow a bottle shape or a colour combination associated with the original) but are likely going to be harder to obtain registrations for in the first place. As a general rule, the broader the degree of protection sought, the more likely there will be an earlier right blocking a registration. Without getting too legalistic, this is best illustrated in the landmark case in this area, L’Oréal vs Bellure. Often referred to as the “smell-a-like” case, L’Oréal took action against Bellure, which made use of L’Oréal’s trademarks in comparison lists that indicated which of Bellure’s fragrances smelt like certain perfumes produced by L’Oréal. While Bellure’s bottle design and packaging were not sufficiently similar to confuse retailers or customers as to the identity of the brand, Bellure admitted that its intention was to give “a wink of an eye” towards its French counterpart. The Court of Appeal of England and Wales eventually applied the Court of Justice of the EU finding of trademark infringement by way of taking unfair advantage of L’Oréal’s trademark, which could exist without the need to show a likelihood of confusion or harm to the “essential function” (the origin function—i.e., telling consumers from whom a product originates by way of a trademark) of the trademark.
- Passing off (as it’s referred to in the UK) is often a useful weapon in the armoury against lookalikes, especially where no registered protection has been sought. As set out in the first article in this series, passing off is an action based on unregistered trademark rights (effectively goodwill). It is necessary to demonstrate that there has been a misrepresentation that makes people believe the lookalike is connected to the original product (this has to be more than just confusion) and that misrepresentation must have caused damage.
- Copyright may be usefully deployed when packaging (or certain constituent parts including a whimsical product description or a drawing) has been copied. UK copyright requires demonstrating that a “substantial part” of the original work has been copied. The very nature of lookalikes is such that this may be a difficult hurdle to overcome—the lookalike will likely have been designed to bring the original to mind rather than be an obvious copy.
- Registered and unregistered design rights may be useful. The type used (subject of course to which rights subsist in the original) will vary depending on whether it is the shape or surface design that is being imitated. While the details of design law can be technical and complex, the key point to bear in mind is that the more unique a design is, the better the chance of obtaining design protection will be.
- Finally, if a brand owner is developing its own formulae, their protection should also be considered. While they may often not be patentable (e.g., due to lack of the requisite novelty or inventive step), brand owners may be able to rely on trade secrets protection. Brand owners should also have confidentiality agreements in place, which will provide contractual recourse in the event of a breach.
Other jurisdictions may have regimes and potential remedies that protect trade dress and/or the “get-up” of a product, so it is always worth getting local advice in the jurisdiction where lookalikes are on sale (or even manufactured—local rules may vary as to what action can be taken where) before conceding defeat.
Lookalikes are one area where so-called “forum-shopping” may be beneficial. Some European jurisdictions have a concept of unfair competition which is broader than passing off. Unfair competition may allow action based on the party marketing the lookalike acting contrary to honest or fair business practices (France), imitation of an original product that will mislead (Italy and Germany), or misappropriation of the original brand owner’s reputation (Spain), among other factors.
Of course, this would not be a useful strategy if the focus is on getting lookalikes in a different country off the market, but could be helpful if the main aim is to make life as difficult as possible for the manufacturer/seller of the lookalikes on a multi-jurisdictional level.
Are there any practical steps I can take to maximise my chances of protecting my product if a problem with a lookalike arises?
- Consider registering key product designs as trademarks (before launch). The cost of securing a trademark registration (especially if an application is opposed) can be high and this will increase rapidly if a number of filings are to be made. It is important to remember that it will be necessary to use the registered trademark in the form registered, otherwise it could be vulnerable to cancellation for non-use after a few years.
- Consider obtaining registered design protection.
- Keep good and clear records that are clearly dated. Emailing or posting these (to obtain a date stamp) can be helpful to demonstrate when the design was in existence.
- Collect and keep records which evidence goodwill in the design—articles, reviews, blog posts etc. These may come in handy when having to establish goodwill for passing off (or equivalent actions).
- Collect and keep records or any consumer complaints that you receive, particularly if they reference being “confused” or have mistaken the lookalike for your genuine product.
- Ensure all IP rights in any packaging, advertising materials, or formulae created by e.g. consultants or external agencies are assigned to the brand owner so that if lookalikes do pop up, the brand owner has the right to take action.
Read the full series:
- Part 1: Very Intellectual (Property)
- Part 2: Counterfeits What’s a Brand to Do?
- Legal Part 4: Influencers and Native Advertising
¹ http://webarchive.nationalarchives.gov.uk/20140603115024/http://www.ipo.gov.uk/ipresearch-looklikes-310513.pdf, p.13
Photo: Sharon McCutcheon via Unsplash