Imitating a product range

'Is it legal', 'can I do this' type questions and discussions.
Post Reply
bode
Regular Member
Regular Member
Posts: 19
Joined: Wed May 18, 2011 9:12 pm

Imitating a product range

Post by bode » Tue Aug 23, 2011 9:47 am

I recently sent copyright infringement notices to a seller who was producing a similar type of car accessory based on my surface design.

He removed them claiming that it was a co-incidence (unlikely), however he is now imitating my product range. He has several surface designs which match my product range but are not close enough for copyright infringement.

He is selling them at a fraction of the price and using a cheaper process and is having an impact on my sales.

I'm aware of clothing manufacturers and perfume companies having similar court battles, but food retailers all have identical "own brand" baked beans and apple and pear flavoured fruit juices? So how can I put a stop to this copycat seller?

User avatar
AndyJ
Oracle
Oracle
Posts: 1689
Joined: Fri Jan 29, 2010 12:43 am

Post by AndyJ » Tue Aug 23, 2011 11:25 am

Hi Bode,
As I think you know copyright applies mainly to works of literary, musical or artistic creation. While clearly the surface decoration of a practical article can have artistic merit, the way industrial or mass produced designs are protected is through patents and design right. Both of these, unlike copyright, create a monopoly for the creator to exploit his design, even if someone else arrives at the same design or process, without copying.
You mentioned 'surface design' twice as being the attribute which the other person has copied. If by this you mean the surface decoration (for example the colour or combination of colours) of your product then you might be able to use the registered design process to protect your work. You can find more details about this on the IPO site. Unfortunately unregistered design right does not apply to the surface decoration of an item, merely its shape.
Patents can offer protection if your item has sufficient novelty compared to what is already on the market (known as the inventive step), but generally speaking it's a long-winded and expensive process to apply for a patent, so rarely worth it for small value, common-place items.
You mentioned about superstores selling their own brand baked beans etc. This of course is an entirely different thing. In most cases the contents of the tin or packet of an own brand product are in fact manufactured by a company which also makes the 'original' product. In any case food products can rarely be classified as intellectual property. The main exception to this is certain forms of protection for food and drink originating from a particular geographical area, suchg as Champagne, Stilton cheese, Melton Mowbray pork pies. The other way a product (including food) might infringe IP rights is if the branding (ie the packaging or name) of the newer product too closely resembles the get-up of the original so that the public are deceived into thinking they are the same product. This is called passing off, and is not described in a statute, but comes about through a series of rulings in court cases over the centuries.
If you are a member of a trade association, or local chamber of commerce etc, see if they can provide some free advice on the way to deal with this situation. Trading standards may also be able to help if it is quite clear that the other person is deliberately copying your products and damaging your business's reputation.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

bode
Regular Member
Regular Member
Posts: 19
Joined: Wed May 18, 2011 9:12 pm

Post by bode » Tue Aug 23, 2011 11:01 pm

Thanks for the information. He started off by taking two "surface decorations" and making substantially similar versions of them. Once I sent him infringement notices, he removed them and copied the product range instead.

Hypothetical example. We both design car seat covers. I have a leopard skin, flower design and boy racer designs. He also produces similar leopard/flower/ boy racer seat covers.

The only thing I could find was this, but I'm not sure if it could be applied to UK law...
http://www.managingip.com/Article/17884 ... awful.html

He was warned in the infringement notice that he should cease imitating my products, so if there nothing in law to prevent imitating a product range, I should go ahead and enforce the original infringement. The other option is to pay for registered design rights, however this would cost a few thousand pounds to cover them all.

User avatar
AndyJ
Oracle
Oracle
Posts: 1689
Joined: Fri Jan 29, 2010 12:43 am

Post by AndyJ » Wed Aug 24, 2011 10:40 am

Hi bode,
As that article says, imitation is generally not illegal if the copying is not too close to the original. The flip side of all IP legislation is that it will stimulate innovation and competition, which is generally seen as a good thing - for consumers at least. For example, patents are closely defined and it does not not infringe a patent to leap-frog over the protected design and come up with something even more innovative using a different process. A good example would be the sensor used in digital cameras, phones etc. One type uses CMOS technology which was originally patented in 1967. In 1969 a different technology known as a Charge Couple Device was patented by Bell Labs. Both do fundamentally the same job, and to the untrained eye look pretty similar, but actually work in entirely different ways. Something similar occurs with some computer programs, such as Microosoft Office and OpenOffice
It is only when the competitor attempts to confuse the potential buyer into thinking his product is the same as your product, because your product already has a good reputation amongst buyers, that imitation is no longer flattery, but something more devious. This is where the law on passing-off comes into play.

As a footnote, here's a report about a recent Australian case which highlights some of the same issues: http://ipkitten.blogspot.com/2011/08/co ... shape.html
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

Post Reply