April 14, 2020
High Court finds against free-rider in FMCG lookalike case
High Court finds against free-rider in FMCG lookalike case

The High Court’s recent decision in Red Bull GmbH v Big Horn UK Limited & Ors [2020] EWHC 124 (Ch) is an important example of the English courts finding trade mark infringement by a lookalike FMCG product purely on the grounds of unfair advantage (Article 9(2)(c) of the European Trade Mark Regulation). What sets this case apart is the Judge’s obiter dicta that (had it been required) she would not have found there was a likelihood of confusion despite the similarity of the infringing product packaging to Red Bull’s registered trade marks, so a claim under Article 9(2)(b) alone would have failed. However, confusion was not required to succeed in a claim for unfair advantage.


The issue of confusion has historically been a problematic one for brand owners (particularly in the FMCG sector) seeking to prevent lookalike products making their way to supermarket shelves. No matter how strikingly similar the packaging, shoppers are often not under any misapprehension that the supermarket’s own brand product originates from the owner of the well-known brand upon which the lookalike is based. They know they are getting a similar product from a different source, and the similar packaging is simply a signpost to help them select the right copycat. Fortunately for brand owners, if they can prove reputation in their packaging/get-up trade marks and that the lookalike packaging creates a link in the mind of the consumer (both of which are likely if someone has gone to the trouble of creating a lookalike product), Article 9(2)(c) provides a route to a finding of infringement.


Stobbs has for some time been recommending this approach (see, for example, Geoff Steward’s article in Intellectual Property Magazine in February 2019, and this judgment is a clear vindication that these infringement claims can succeed.
Food & Drink /  Trademarks /  Look-a-likes /  Disputes

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