The Impact of Lookalikes: The UK Intellectual Property Office Weighs In

We all have eating and drinking in common.  Yet our preferences distinguish us. Some of us will only have Maggi 2 Minute Noodles. Others want the noodles, but are delighted if it is a competitively priced home brand product. Some of us love nibbling the wavy layers only of a Smith’s Crisp.  Others are happy to have a chip which looks and tastes like a Smith’s Crisp, even if it is not one.

Trade indicia help consumers recognise the brands they love, and also brands which are ‘like’ them, but not them.  In the hotly contestable world of fast moving consumer goods, this can lead to understandable tension between brand owners and own brands.

Following the recent launch of our IP Whiteboard lookalike score card, see here our antennae have been alerted to a recent report by the UK Intellectual Property Office (IPO) entitled: “The Impact of Lookalikes: Similar packaging and fast moving consumer goods.” [Ed: visualise index finger scratching chin in intrigued and interested fashion.]  The report is a careful and even-handed literature review and research study commissioned by the IPO.

Much of the report contains an economic analysis discussing the pros and cons of lookalikes.  This is academically interesting, but we do not have a tort of unfair competition in Australia. The report is more relevant when assessing whether or not lookalike packaging can cause consumer error and, if so, how. Whichever side of the fence you’re on, there are some interesting insights.

One thing the researchers grappled with was the question, what is a lookalike?  They postulated the following potential statutory definition:

goods which by virtue of their name, shape, colour, packaging or labelling or any combination thereof, are similar in overall appearance to the goods; but excluding any of those things which are descriptive, functional or commonplace.”

This provides a useful starting point in assessing whether a product is a ‘lookalike’ or not.  For instance, the colour green tends to be emblematic of environmental products, rather than a particular product.  Likewise, a bottle shape might be functional, although particular design elements might be distinct.

Whilst helpful, we do caution against simply adopting this definition in your next Statement of Claim.  This is because questions of passing off, for example, can be assessed in Australia having regard to the ‘overall impression’ of the product complained of.  Dissecting constituent elements of packaging can be antithetical to this contextual approach.

One survey referred to in the IPO report and conducted by Mars in 1995 caught our eye.  It provided insights into the packaging characteristics reported by consumers to have caused them to purchase the wrong product by mistake. These included:

  • The same colour (28%)
  • The same or similar shape (13%)
  • Looked the same or similar (30%)
  • Had a similar product design (22%)
  • Were on the same or similar shelf in the store (7%)

The IPO researchers also reported, based on interviews they conducted, that consumers may attach an order of importance to various brand elements, starting with colour, then shape, then wording or other logo, and then iconography (page 63 IPO report).

Having this sort of data to inform how we think is helpful, because when trying to assess how consumers might respond to packaging, it is extremely important to put to one side personal assumptions as much as possible. People can respond differently to packaging depending on generation, gender, demographics, and simply, because one of the wonders of being human beings is that we are not all the same.

It therefore does not surprise that consumer reactions to the concept of lookalikes can vary significantly, as the IPO report also revealed.  A significant minority of the overall population interviewed in the Mars report, for example, did not think it was important for packaging to be distinct.  However, for those who had picked up the wrong product, 86% reported that distinctiveness mattered.

That these different responses might exist is not rocket science, but the harder task is to assess the proportion of responses most likely to prevail when assessing the legal risk of a lookalike product.

For instance, some of us will walk down that snack aisle, having missed lunch and hungry for munchies, and head straight for the packaging containing tasty pictures of orange, twisty shaped crunchy things.  We want our Twisties!  Within 2 to 3 seconds (which research suggests is the time consumers look at packaging before making their purchasing decision: page 63 IPO report) we might grab the product impulsively, and it is only at the counter that we will see Cheezy Twists are in fact in our hand (refer our earlier post if you want the context behind this one).

Contrast this, however, to the person with only $5 dollars to spend.  They can afford a loaf of bread, some milk, and a snack.  The scrutiny they afford to the price of each product, is likely to have a completely different impact on their impressions and recall, with a higher degree of attention paid to packaging as a result, and the prospect of error less likely.

Given the challenges in trying to understand how consumer segments might respond to different types of packaging, it goes without saying that survey evidence can be an important method of demonstrating to a court your view of the world, whatever that might be.  This is, however, a contentious area of evidence given that no survey is perfect.  Surveys by their very nature have an element of artificiality, even if the purchasing environment is replicated to the best extent possible.

Experiments designed to assess human behaviour can also risk being at the outer edges of credibility before a sceptical judge, accustomed to applying a rational mind above all else.  ‘Blurring experiments’ and ‘heuristic research’ (see page 32 of IPO report) are capable of fitting into the ‘incredible’ category unless their import can be practically explained.  It is worth thinking about this when in the throes of excitement talking to an interesting expert [Ed: Some of us have – ahem – fallen into this trap.]

The researchers behind the IPO report obviously have a passion for surveys, and their dissection of a number of surveys into consumer behaviour is worth reading before incurring the costs of implementing your own. Their observation that much of the research into, say, loss of sales “has suffered from imprecise terminology and methodology…and must be viewed with caution” (page 28) serves as a warning that the realm of surveys is one needing a laser sharp focus.  For anyone thinking of conducting a consumer survey, the IPO report contains a useful checklist at page 46.

There are no definitive conclusions in the IPO Report, so if you are looking for The Answer from the IPO Oracle, you won’t find it.  Careful to offend no one, one can perhaps criticise the report on the basis that it is hard to assess whether in fact it has a point of view at all.

Still, if you are looking for a good repository of information designed to inspire you to test that most subjective of assessments, the purchase of goods, you will find it here.