30. Look-alike goods are those that are so close
to a branded good in appearance that they call the branded product
to mind. The generality of 'own-label' goods produced by supermarkets
(and others) are in straightforward and fair competition to branded
goods. MacBride, a manufacturer of own-label goods, raised concerns
over the effects on competition of ever more wide-ranging applications
for trade mark registration from brand owners seeking to close
We concentrate here on look-alikes rather than own-label goods.
The British Brands Group describe the sole intention of look-alikes
as to "ride off the innovation, investment, effort, risk
and reputation of the brand".
Tesco, however, describe the purpose of a look-alike product as
"to indicate to consumers that there is a competing (and
cheaper) product of the same quality as the manufacturers brand".
Evidence is patchy as to how far consumers really are confused
by look-alikes. Consumers' Association's research "found
very little such confusion and thus very little concern about
consumers being misled or confused".
Any confusion occurs in two ways: either consumers purchase the
look-alike by mistake thinking that it is the branded good; or
they believe that the look-alike is made by the brand owner. The
latter point raises some interesting issues. Whilst the BBG told
us that "in the case of look-alikes they are not coming off
the same assembly line, they are produced by different companies",
they also gave us an example of a brand owner producing own-label
goods. Mr Blackett told us "I know that in the case of United
Biscuits they have a dedicated factory unit producing the private
label products for supermarkets and they have separate managements
and separate accounting systems".
31. If there is a likelihood of confusion between
the branded product and the look-alike, the brand owner has the
normal remedy for trade mark infringement in 'passing off'. The
action of 'passing off' protects the 'goodwill' of a business
or the 'goodwill' associated with a product, its appearance or
'get-up'. Passing off serves two functions: the protection of
a trader against the unfair competition of his/her rivals; and
the protection of consumers who would otherwise be confused as
to the origins or nature of the goods and services they are offered.
In 1990 in Reckitt & Coleman Products Ltd v Borden Inc
(the Jif Lemon case),
the passing off case was won on the grounds that the plastic 'Jif
lemon' was held to have acquired a secondary distinctive meaning
signifying the claimant's particular lemon juice as opposed to
just any lemon juice. Borden had produced a lemon juice product
that had essentially the same packaging (the lemon shape) apart
from a different coloured cap. In this case, Lord Oliver identified
the three elements the claimant must show to succeed in passing
off. Broadly these are: goodwill or reputation attached to goods
or services in the minds of the public associated with an identifying
'get-up'; a misrepresentation by the defendant leading the public
to believe the goods or services offered by the defendant are
those of the claimant; and damage or likelihood of damage resulting
from the defendant's misrepresentation. In a later case, Bostick
Ltd v Sellotape G B Limited,
Sellotape marketed a product 'Sellotak' in competition with 'Blu-tak'.
The product was coloured blue but since the colour of 'Sellotak'
could not be seen until taken from the packet, it was found that
there was no likelihood of confusion and, in any event, it was
unlikely that similarity in colour could lead to confusion. The
implications of the Silhouette case for unregistered marks
protected by passing off are unclear. Passing off is not committed
if identical goods are imported into the UK bearing the brand
owners' trade mark. However, if goods of inferior quality are
imported into the UK bearing the same trade mark, the owner of
the mark will have a case.
32. The alleged problem lies in the stringency of
the text of confusion. Look-alikes are free to call to mind the
branded product and, in a sense, ride on its market achievement
without trade mark infringement or falling foul of the law of
passing off. The BBG state that the current legal remedies - the
common law of passing off and the 1994 Trade Marks Act - are not
effective in dealing with look-alikes, suggesting that passing
off is "very difficult and disproportionately expensive to
prove", and the Trade Marks Act is "ill-equipped to
tackle look-alikes as these do not tend to copy trade marks"
and cited the Penguin v Puffin case, one of the few to
come to court.
Its significance is, however, confusing. In this case, the passing
off case was, in fact, won and resulted in material changes to
the get-up, although the trade mark infringement was lost on the
grounds that the only registered mark the plaintiff could rely
on was the word 'Penguin' and this was not infringed by 'Puffin'.
Mr Willoughby of Willoughby & Partners Solicitors took the
view that "the fact that the defendant in that case continued
to use the name Puffin had nothing to do with the lost
trade mark case, but everything to do with the fact that the parties
(trading partners) had had enough fighting and wanted to settle
In another example, Sabel v Puma (November 1997), Sabel
applied to register in Germany the trade mark Sabel with a device
consisting of a bounding cat (resembling a cheetah). Puma felt
it was too similar to one of its marks of a bounding or leaping
cat (a puma). The ECJ held that the fact one mark brought to mind
another (that is, there was a likelihood of association) did not
mean there was a trade mark infringement under the Directive.
ICI told us that as a result of competitors encroaching on their
label design for DULUX(R) they "found themselves in a position
where seeking to defend our rights by recourse to law was no longer
a viable option". Instead ICI adopted a new livery capable
of better protection, at a considerable cost.
33. In the grocery sector, there is a voluntary dispute
resolution procedure to settle issues such as look-alikes. The
BBG describe it as "inadequate as it is limited to the grocery
sector and does not cover imports".
They also told us that Asda had refused to sign the code.
Tesco told us that they used the grocery dispute procedure to
discuss look-alike products with a leading grocery supplier. Partially
as a consequence, Tesco stopped producing look-alike products.
In their view "the procedure works and such a procedure for
self regulation is absolutely crucial for the manufacturers".
We were interested to learn of the existence of a voluntary
dispute procedure in one sector: it is an example which producers
and retailers in other sectors would do well to imitate.
34. The BBG state that every mainland European country
and many states of America have unfair competition law which would
help prevent look-alikes. Mr Noble told us "It is that type
of a measure which in the UK would fill this gap which at the
moment allows these sort of products [look-alikes] to flourish".
The BBG supplied us with a number of examples where "tighter"
legislation in other countries has enabled judgements in 'passing
off' against look-alikes, including Uncle Ben's versus Amor rice
in Greece, Ace Gentle Bleach versus Total in Spain, and Duracell
versus Panasonic batteries in Germany.
The Chartered Society of Designers also question whether present
UK law is "adequate to discourage this practice [of look-alikes]".
The Institute of Trade Mark Attorneys told us "the existing
law, whatever it is, is not evidently proving to be sufficient
to defeat the problem".
35. There are others who believe the law is effective
and that any changes would cause additional problems. The Government
believes further legislation on look-alikes is not appropriate
and believe the current law to be adequate.
The Chartered Institute of Patent Agents believe that the terms
'get up' and 'brands' are insufficiently precise to warrant additional
protection and "further indefinite protection as was suggested
in the 1998 Competition Bill would actively disadvantage persons
wishing to search the state of the Register in order to know whether
they are clear to adopt a particular trade mark".
In oral evidence they explained that the registered trade mark
is searchable, but that the common law of passing off confers
a right over unregistered marks. Mr Weston told us "it is
a right which is there and as such it is very difficult to search
to find out whether there is an unregistered right for a particular
shape of bottle or anything else".
36. The Minister told us that the subject of look-alikes
"is under examination by the Competition Commission at the
The Director General of Fair Trading referred to the Competition
Commission: "the matter of the existence or possible existence
of a monopoly situation in relation to the supply in the United
Kingdom of groceries from stores". We were surprised to
learn that look-alikes would be covered during the Competition
Commission's investigation into potential uncompetitive practices
We would, however, welcome the Commission taking this opportunity
to examine the issue of look-alikes from the standpoint of competition.
We are not convinced that the law is deficient in this area; the
simple fact is that, whatever the law, brand owners would be understandably
reluctant to start legal proceedings against the supermarkets
who are their largest customers.