Whilst it is often said that imitation is the highest form of flattery, when it comes to intellectual property, the opposite is very much the case.
A corporate brand, together with its various copyright, designs and patents, will invariably be the key differentiator that sets a product apart from its competitors. It also acts as a signpost for consumers who know and trust a particular brand and pick up on visual designs when selecting a particular product from a plethora of similar options in a crowded retail environment.
The issue of look-a-like products which intentionally use visual branding to closely position themselves to more expensive well-known brands, is becoming a particular issue.
Most recently, designer make-up brand, Charlotte Tilbury, has successfully taken legal action against low-cost supermarket, Aldi.
British make-up expert Charlotte Tilbury, who reputedly counts the Duchess of Sussex, Amal Clooney and Sienna Miller amongst her A-list clients, has a cult following, with one of her eponymous make-up company’s most popular lines – the ‘Filmstar Bronze and Glow’ palette – retailing at £49.
Understandably, her legal team took a dim view of Aldi’s attempts to rip off the product’s design, which was then offered at a knock-down price of just £6.99 across its chain of supermarkets.
One of the key aspects of the case centered on the starburst ray-effect design which was embossed into the powder.
Deputy Master Linwood was asked to consider whether copyright could exist in a powder design, which would disappear following use of the product.
The court concluded that even though the powder design was ephemeral in nature, copyright protection in the powder design would not be affected or removed – since “the powders are a three-dimensional reproduction of the two-dimensional object, namely the [design] drawing”.
Deputy Master Linwood was also asked to consider the notion of ‘originality’ in the claimant’s design, given that the starburst logo were inspired by earlier art deco designs.
The court concluded that even though the main creators of the Works had drawn inspiration from art deco, and whilst the elements – when considered individually – were generic, the Works as a whole were original due to an absence of ‘slavish copying’. Thus, copyright protection would subsist.
In his judgment, Deputy Master Linwood ruled that the similarities were substantial, from a quantitative as well as a qualitative perspective and that copyright infringement was therefore established.
Alex Hall, a senior solicitor in iLaw’s litigation team who regularly deals with IP disputes, said: “The key lesson resulting from this case is that a non-permanent ‘highest work’ (in this case the imprinted starburst design on the make-up powder) can still be treated as a ‘work’ and afforded copyright protection. Similar examples of copyrighted designs in non-permanent works include ice sculptures and wedding cakes.
“Although not widely reported on, it is also worth noting that at least some of the design work was carried out on behalf of the client, by an agency, without a written agreement.
“This, in effect, meant that it was a live issue before the Court as to whether the Claimant actually owned the copyright, as the legal interest in copyright cannot be assigned other than in writing (s.90(3) of the Copyright, Designs and Patents Act 1988).
“In the event, this was largely cleared up by the claimant and the design agency entering into two deeds of assignment shortly before and during the course of proceedings, but it could have caused problems for the claimant if the agency had not been cooperative.”
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