3rd March 2021

Evidence gathering for a ‘copycat’ action

Law firm Clifford Chance explains the evidence gathering steps necessary when establishing a case against a ‘copycat brand’ under the CPRs.


By Vanessa Marsland & Roland Scarlett
Clifford Chance LLP
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Much of the evidence as to how a consumer would be likely to behave or think may be achieved by an objective analysis of the copycat packaging

Misleadingly similar packaging, sometimes referred to as ‘copycat’, ‘lookalike’ or ‘parasitic’ packaging, has become an increasingly common feature of the retail environment over recent years. A number of well-known retailers’ own-brand products bear striking similarities to branded competitor products in terms of the shape, format, colour coding and naming used in their marketing, including on their packaging.

It is reasonable to conclude that such practices may result in consumers buying a copycat product, believing it to in fact be a branded product (a ‘mistaken purchase’), or buying the copycat product on the understanding that even though the products are made by different traders, they must be somehow related (as to source or qualities) when in fact they are not (‘mistaken attribution’).

A previous article considered how the Consumer Protection from Unfair Trading Regulations 2008 (CPRs) could protect consumers from mistaken purchase or mistaken attribution caused by copycat packaging. It noted that:

  • Regulation 5(2) prohibits actions by traders where (i) the product’s overall presentation… (ii) …deceives or is likely to deceive… (iii) … in relation to the nature, benefits, or composition of the product… (iv)… and causes or is likely to cause the average consumer to take a transactional decision they would not have taken otherwise.
  • Regulation 5(3) prohibits actions by traders where (i) the marketing of the product… (ii) …creates confusion… (iii) … with any products, trade marks, trade names or other distinguishing marks of a competitor… (iv) … and causes or is likely to cause the average consumer to take a transactional decision he would not have taken otherwise.
  • Regulation (3)(4)(d) and Schedule 1 to the CPRs prohibit a trader from “Promoting a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by that same manufacturer when it is not.”

In this article, we consider the nature and sourcing of the evidence necessary for an enforcement officer to establish a successful case under the CPRs.

What must be established under either Regulation 5(2) or 5(3) is the existence of practices that give rise to a likelihood of the notional consumer making a transaction on the basis of likely confusion or deception. However, Regulation (3)(4)(d) requires deliberate behaviour on the part of a trader – thus necessitating a higher evidentiary burden.

Evidence establishing likely behaviours and states of mind

Much of the evidence as to how a consumer would be likely to behave or think required under Regulations 5(2) and 5(3) may be achieved by an objective analysis of the copycat packaging in light of branded alternatives.

A starting point would be a review of samples of branded and copycat packaging – identifying similarities in, for example, product name, logo, colour palette, shape, position of signs on the packaging, imagery and the product description. Dialogue with brand owners or groups representing them may allow enforcers to quickly identify the most egregious examples.

Enforcers should also look at marketing practices of traders selling copycat products, including print and other media, such as online and social media campaigns; and any published material concerning the trader’s marketing strategy.

Evidence establishing actual behaviours and states of mind

Enforcers may also want to find actual evidence of consumers being confused or deceived and thus entering taking transactional decisions in order to establish whether those mindsets and behaviours are “likely” in practice.

This may prove more difficult to establish however, as often copycat products will tend to be individually low value (even if their revenues may be very high), and therefore attract fewer complaints. Consumers may also mistakenly blame themselves for mistaken purchases (“Oh! I thought these were Rich Tea biscuits, silly me!”).

In order to develop appropriate evidence of actual confusion, enforcers should consider public domain evidence of patterns of mistaken attribution or mistaken purchases. One such example would be customer reviews on retailers’ own websites.

Third-party consumer review websites such as TrustPilot.com or other consumer websites such as mumsnet.com also allow consumers to post retailer reviews and thus provide to enforcers searchable records of consumer experience.

Enforcers may also rely on the powers provided for under Part 3, Schedule 5 of the Consumer Rights Act 2015 (CRA) to request information from retailers such as records of customer complaints in relation to mistaken purchases of copycat products, complaints regarding the quality of copycat products which indicate expectations as to quality by reference to the original brands, or rates of product returns on those bases.

Evidence of deliberate misleading behaviour

In order to establish deliberately misleading behaviour on the part of a trader for the purposes of Regulation (3)(4)(d), information that an enforcer may wish to request from a trader under the CRA might include:

  • Procedures and/or instructions given in relation to the marketing of copycat products, including positioning in the retail environment;
  • Design briefs provided to those responsible for the design of copycat products and any explanation as to the requirements for particular characteristics of packaging; and
  • Any internal discussion as to the risks and benefits of copycat marketing.

Historic evidence of changes made to copycat packaging over time in order to maintain similarity with changes to the original branded product would also be helpful. Amongst retailers, the positioning on shelves and marketing of copycat products in relation to the branded equivalent may also point towards deception.

These pieces of evidence may show, for example, that the producer of the copycat packaging is actively seeking to mimic brands and procure sales by virtue of confusing the consumer.

Practices which are replicated across a range of products would provide more convincing evidence of a course of dealing that must be with the intent of deliberate deception.

Summary

While enforcers seeking to take action to protect consumers against mistaken purchases and mistaken attribution under the CPRs may be less likely to benefit from direct consumer complaints due to the typically low value nature of the products in question, there exists a large pool of evidence available to determine the likelihood of the relevant consumer behaviour and mindsets; the actual existence of those behaviours and mindsets; and deliberate deception on the part of the trader. Together, we consider these sources could provide sufficient evidence to mount a case against copycat packaging on the basis of the CPRs.

Vanessa Marsland and Roland Scarlett are lawyers specialising in intellectual property at Clifford Chance LLP.

Those interested in the subject are invited to contact John Noble of the British Brands Group at jn@britishbrandsgroup.org.uk