Practical takeaways for brand owners: proactive protection against copycats, lookalikes and dupes

In this article, the third and last in our series, we look at some of the practical measures brand owners can adopt globally to protect themselves from copycats.

As outlined in the second part of our series, different jurisdictions have approached tackling counterfeits and lookalike products differently. In most jurisdictions, multiple causes of action are available and can be used cumulatively, so a "one size fits all" protection and enforcement strategy is not advisable. It is better to keep in mind all the possible options listed below and tailor your enforcement strategy to your particular challenges and jurisdictions. But generally, adopting a layered approach to protection and enforcement will give you options. Some examples of best practice we have seen include:

Keeping a close eye on the market

• Monitor online platforms and social media for counterfeit listings or other infringements. Routine monitoring can help to identify trends, including whether particular platforms, sales channels or territories are of particular concern. It can also help to uncover evasive practices, such as the use of nicknames to tacitly refer to brands without attracting attention, or the display of product images with incriminating elements blurred (such as logos).
• Join forces with ecommerce and social media platforms and customs authorities to facilitate seizures and takedowns. Strengthening enforcement requires better co-ordination, information sharing and collaboration between brand owners, platforms and the authorities. Certain platforms offer preferential treatment for particularly engaged brands (such as Alibaba's Good Faith Takedown Mechanism).
• Prompt action is key to avoid market dilution which will make it harder to enforce your rights.
• Use anti-counterfeit technology on genuine products (QR codes, holograms and blockchain to authenticate products).
• Consider the use of AI to help identify sophisticated infringers and the most harmful threats so that you can prioritise action.

Education and joining forces with others

• Educate customs officers and other relevant authorities on the quality and authenticity of genuine goods and how to spot a counterfeit.
• Consider joining industry groups and campaigns to share intelligence and increase lobbying power if changes in the law are needed.
• Invest in consumer education on the benefits of buying the genuine product, not only in terms of quality but also in terms of safety, customer service and sustainability and for luxury goods, possible resale value.
• Work with influencers to promote the original product with your target audience.
• Unlike counterfeits, dupes lie in a grey area of the law which can make them difficult to stop. They do not claim to be the original nor do they (usually) use the original's trade marks. When dealing with dupes, getting social influencers on side is important.

Keeping your own house in order – effective portfolio management

• Carefully consider your trade mark portfolio, and what should be registered as a trade mark and where. Do you have sufficient protection in your core markets, for your core marks, and for your core goods and services?
• Layer different forms of protection for new products and their packaging (registered trade marks, registered designs etc) to give options for enforcement depending on how the copycat mimics the original product. Design registrations are often cheaper and easier to obtain than registered trade marks in certain jurisdictions, and can be easier to enforce. Consider also registering slogans and marketing phrases as trade marks where possible, as well as any nicknames used by consumers (or copycats!).
• Consider seeking registrations for non-traditional marks such as shapes or colours. While often challenging to obtain, where successful they could be a powerful tool in your arsenal.
• Don't forget unregistered IP rights (such as copyright or unregistered trade mark or design rights) for original or distinctive elements, but make sure that you have evidence of chain of title to prove that you own the rights.
• Where consultants (non-employees) are involved in creating designs or campaigns, make sure that they have assigned their rights to your company. Do your contracts always include an assignment of IP rights? Have you even got written contracts in place? Many valuable brands start life very informally as SMEs with the result that ownership of house brands can be less than clear. This was the case many years ago in the UK for the Innocent brand and its "dude" trade mark.
• Evidence of acquired distinctiveness can be key in obtaining registrations or claiming a broader scope of protection. If you have strong brand power, collate press articles and survey evidence that demonstrates market recognition.
• Consider alternative means of complaint that could stop the dupes, such as under consumer protection, product quality or advertising laws and regulations.
• Protect your trade secrets – make sure that your supply chain is secure and employees are educated about the important of keeping proprietary information confidential. Leaks of manufacturing information can be valuable to counterfeiters and copycats looking to replicate your product.
• Consider your domain name strategy. Do you own the domain names for commonly misspelt versions of your most valuable brands to avoid them being bought by counterfeiters or dupes?

Being proactive and innovative

• Consider dupes in your own marketing campaigns. Some brands have run events in which they actively invite consumers to compare dupe products to branded originals, highlighting the quality of the originals and leading to sales from new customers. Other brands have launched their own dupe products or social media campaigns which purport to promote a dupe but in fact direct consumers towards their original website and products. Such campaigns can be successful, but need to be carefully planned and executed.
• Some brands have applied to register word marks containing their brand name and the word "DUPE", presumably to take action against third parties using the term to advertise their products as dupes. This is an emerging strategy and it remains to be seen how successful it will be. Some IP offices may raise objections to such filings on the grounds that the brand owners don't intend to use them in the manner normally required under trade mark law. Further, even if brand owners obtain registrations for such marks and attempt to enforce them, canny dupe purveyors, already adept at navigating legal grey areas, may well change their practices to avoid infringing such registrations.
• Watch out for comparison lists: comparison lists associating a lesser-known brand with a well-known trade mark could constitute trade mark infringement (following the landmark 2009 CJEU decision of L'Oréal v. Bellure).

Limitations of the current legal framework. How could the law be improved?

Coco Chanel is often quoted as saying that "Being copied is the price of success". While imitation may be a form of flattery, its effects can be hugely damaging to the original brand and it can often cross the line into illegal imitation or unfair commercial practices.

We have seen that trade mark law alone may not be enough to prevent dupes. While most jurisdictions have some form of unfair competition law (albeit called different things, such as passing off in the UK), it is a broad concept and means different things in different jurisdictions. In 2022, WIPO published a status report on protection against unfair competition in WIPO member states. While it found some convergence of general principles, we are still a long way away from harmonisation to ensure fair competition in the global marketplace. Harmonisation of different national concepts would be difficult, but given the huge rise in dupe culture, perhaps now is the time to try again? Addressing the patchwork of forms of redress and trying to harmonise similar concepts to create a (more) uniform enforcement mechanism would make it easier for brand owners to protect their investment internationally.

In any case, the law needs to develop in order to make it easier for brand owners to adopt a consistent (and more efficient) approach to brand protection in the global marketplace. We have seen a trend develop recently with court decisions in numerous jurisdictions in favour of brand owners. It will be interesting to see if this trend continues.