The rising tide of copycat litigation: recent UK copycat case law and what brands need to know

With the rise of social media and increasingly online lifestyles, products are constantly scrutinised in public, and brands rely heavily on influencers to shape perception. Independent designers are struggling to take action against large fashion retailers that may be copying designs from smaller businesses.

At the same time, shifting economic pressures have normalised the purchase of “dupes,” removing much of the stigma that once surrounded imitation goods. As consumers become more accepting of lookalike products, companies are more than willing to replicate successful designs. This has in turn resulted in a noticeable increase in copycat litigation.

We are seeing copycat disputes play out in court across the world. Take Sol de Janeiro’s complaint filed against Australian beauty brand MCoBeauty in New York, alleging MCoBeauty created cheap knockoff perfume mists that infringe Sol de Janeiro’s rights by copying the look and feel of the Brazilian-inspired brand's products. The complaint alleges false advertising, trade dress infringement and unfair competition.

Other high-profile lawsuits in the US include Deckers v Last Brand Inc. (the parent company of Quince), in which Deckers alleged design patent infringement in relation to its Ugg mini boots, and Brandy Melville’s lawsuit filed in California against Shein (the trade mark claims were dismissed but the court has allowed the copyright claims to proceed along with claims on how Shein operates and profits on its platform). Brandy alleges that Shein used Brandy’s product images to market lookalike products.

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In Denmark, we’ve seen Ganni battle it out with Bianco Footwear over a range of buckle shoes and in Belgium, the Dr Marten’s boots with yellow stitching were found to have been infringed by Redisco’s orange stitching on similar boots.

These types of copycat disputes are emerging across the globe, with brands having more success in some jurisdictions than others.

Below we discuss two important cases in the UK in relation to trade mark and unregistered designs rights and how the courts are dealing with copying at a time when dupe culture is rife.

Copying unregistered designs in the UK

Boohoo v Edwards is a case from last summer whereby designer Sonia Edwards filed a claim for infringement of an unregistered design against fashion retailer Boohoo. Edwards argued that Boohoo copied bikini designs, puffy shoulders on tops, curved waist bands on trousers, etc. Designs are covered by section 213 of the Copyright, Designs and Patents Act 1988. Design protection arises when a design is recorded in a design document or when an article has been made of the design (i.e. clothing made from designs). In this case, the design right was alleged to be in the clothing itself and not in a design document.

Unfortunately for Edwards, the court determined there was no evidence of copying and therefore found no infringement. The court noted that features that cannot be seen on a piece of clothing - for example, concealed patterns - or features which are not present, i.e. a lack of a zipper, cannot form part of protection for design rights. One of the arguments made by Edwards was that a design’s shape and configuration can vary when worn. The court disagreed and said the design right must be clear.

For the fashion industry, the case highlighted that as huge quantities of clothing are designed and produced weekly, there are only so many ways to design clothes to fit the body. Edwards had a small social media following and the court found it unlikely that a large company like Boohoo had taken inspiration from her social media account. In the end, Boohoo successfully defended the action and the court acknowledged that it’s unsurprising that designs resemble previous designs given the large-scale production in this industry. However, the outcome of the case suggests that where intentional copying can be demonstrated, brand owners may find the courts more receptive.

Using benchmarking to copy products

In contrast to the difficulties faced by Edwards, the recent UK trade mark case Thatchers v Aldi represents a significant and encouraging outcome for brand owners, particularly in tackling “copycat” strategies used by some retailers. Though it relates to product packaging rather than fashion, the decision is relevant to fashion brands as the ruling strengthens the application of section 10(3) of the Trade Marks Act 1994, which protects marks with a reputation from unfair advantage, even where there is no likelihood of consumer confusion.

Thatchers, a long-established UK cider producer, launched a lemon-flavoured cider after decades of producing only apple-based products. The brand invested heavily in promoting the product, prominently featuring lemons on its packaging, and it quickly became successful. Aldi, known for developing own-brand goods based on leading products, used Thatchers’ lemon cider as a benchmark for its Taurus lemon cider. Trial evidence showed Aldi closely referenced Thatchers’ packaging when designing its own product, despite opting for a cheaper formulation without real lemon juice.

Thatchers was unsuccessful at first instance, but the Court of Appeal ruled in its favour for the s.10(3) Trade Marks Act 1994 claim, concluding that Aldi intentionally sought to benefit from Thatchers’ established reputation.

Aldi was able to achieve strong sales without comparable marketing investment, effectively capitalising on Thatchers’ promotional efforts. Importantly, this was the intention of Aldi, determining factors in the decision.

What fashion brands need to know

From Boohoo v Edwards, the challenge of arguing a design right sitting within a piece of clothing becomes clear. The court had emphasised how many items are produced on a weekly basis and that its highly likely some designs will resemble others. Having a design recorded in a design document is a better approach, as this would set out dimensions and specifications, and it could make it easier to establish infringement in court.

Fashion brands need to know that concealed elements in the clothing will not be protected by designs in the UK. Smaller brands or independent designers should take advice when considering suing larger brands, as the mass produced nature of clothes means that large fashion retailers can argue they did not copy smaller brands and designers.

In the case of Thatchers, however, there is evidence that is it becoming riskier for copycat businesses to copy products, particularly when there is a demonstrable intention to benefit from the reputation of the benchmarked product.

Some brands may not have registered rights in what is being duped, and if this is the case, the common law of passing off could be the legal remedy, however, providing enough evidence to prove actionable goodwill and misrepresentation to succeed in a passing off case can be difficult. Therefore, it is advisable that brands obtain registered trade mark protection for their valuable brand assets.

Fashion brands may struggle in similar situations to obtain registered trade mark protection for items of clothing, but could seek protection for the packaging, provided it is distinct from the product.

What should you do if you find out there is a copycat product on the market?

Stobbs has developed a counter-copycat strategy that includes the following: First, establish what rights you have in the product or packaging; second, keep records of the infringing activity; and third, gather evidence of reputation and any confusion from the public. Once these steps have been conducted, fashion brands can assess if further trade mark filings are a good strategic option.

What should you do if you want to take inspiration from a leading product without infringing? The key element, as highlighted in the Thatchers decision, is the commercial fairness of the conduct. Aldi’s conduct was unfair and there was the intention to benefit from the investment Thatchers had made.

Whether protecting your own product or drawing inspiration from competitors, understanding and managing intellectual property rights is essential. Fashion brands should be aware of the issues in proving design infringement and should record designs in a design document. They should also consider obtaining registered trade mark protection for the packaging, so that when a copycat is identified, brands are in the best position to tackle it.