Brand owners go to great lengths to have their product stand out to customers. While the name of the product is a core part of this, it is not the only element of the overall product which performs this function. The stylisation, colour, look and impression of the product itself or of the product’s packaging all play a part of the desirability of the product and getting the consumer to select it.
As a result, the brand name it is not the element copied by third party competitors or supermarkets seeking to have their product appeal to your customer look to adopt. There would be clear trade mark infringement if the brand name, or a confusingly similar name, is utilised for the same type of product.
Given this, third parties often turn to other elements of the overall “look and feel” of the product to attract your consumers to its product, such as the shape of packaging or product, imagery, colours, and overall stylisation. The difficulty for a brand owner is that if only the brand name has been registered, it may not have rights to prevent use of the other elements of packaging by third parties. In this regard, the recent COLIN the Caterpillar v CUTHBERT the Caterpillar illustrated this recently, as the names were not confusingly similar.
Recent case HAMPSTEAD GIN (Lidl) v HENDRICKS GIN (William Grant & Sons)
It has further been considered whether relying on passing off can assist in the absence of trade mark infringement in the recent HAMPSTEAD GIN (Lidl) v HENDRICKS GIN (William Grant & Sons). Lidl had been selling its HAMPSTEAD GIN for over ten years but in 2020 launched a new get up for the product who bore resemblance to HENDRIK’S, which led William Grant to take action on passing off and trade mark infringement before the Court of Sessions in Edinburgh, having a registration of the bottle with label applied to rely on. Arguments of trade mark infringement due to similarity and passing off failed (which requires misrepresentation to succeed) – the presence of the name HAMPSTEAD GIN was sufficient to prevent Wm Grant & Sons being successful on these grounds as while there was some similarity, taking all relevant factors into account a likelihood of confusion or misrepresentation were not deemed to arise.
However, the interim interdict granting an injunction to prevent the sale in the new get up was successful on the basis of Section 10(3) of the Trade Marks Act 1994 on the basis that there was some similarity and a reasonable prospect that HENDRICKS could be shown to have a reputation and that Lidl could be shown to have amended the design of its get up with the intention of benefitting from the reputation, illustrated by the fact that the price of the product had risen by 60% after the get up changed.
No reputation and just about to launch?
However, what if you do not have this type of reputation to rely on as you are at the brink of launching a new product. Can you take any steps to product your packaging and stylisation? Yes, if it has not been on the market/in the public domain for more than 12 months.
Design registration can enable you through one multiple design application to protect all the layers of stylisation embodied in your product. Such design registrations, achieved through one application, will make it difficult for a third party to use any element of the branding on their own packaging. Unlike trade mark registration, where the trade mark must be deemed to be distinctive and indicate origin, design registration can be for the more banal elements provided they are new.
If you would like any further information on protecting your branding through design registration, please contact Eleanor Coates, Director, Trade Marks.
