Businesses will not get new powers to clamp down on copycat packaging, UK government confirms

Out-Law News | 22 Oct 2015 | 2:54 pm | 1 min. read

The UK government has decided against giving businesses the power to seek civil injunctions to prevent rivals copying the designs of their product packaging.

The Department for Business, Innovation and Skills (BIS) said granting the civil injunctive power would have "unintended consequences" for enforcement and lead to an increase in litigation (38-page / 595KB PDF).

Last year the previous coalition government had opened a review into the enforcement of the Consumer Protection from Unfair Trading Regulations (CPRs) against 'copycat packaging'. As part of the review it asked brands, businesses and other stakeholders for their views on whether to extend the range of powers at companies' disposal to prevent copycat packaging.

'Copycat packaging' is the act of "designing a product’s packaging to give it the look and feel of a competing well-known brand", according to the government. 

Businesses cannot always rely on their trade mark rights to protect against copycat packaging because the practice is "distinct from counterfeiting as normally it does not involve copying trade marks", it said. 

However, UK consumer protection laws do prohibit "any marketing of a product (including comparative advertising) which creates confusion with any products, trade marks, trade names or other distinguishing marks of a competitor". 

Currently, businesses have to rely on a specified enforcement body, such as Trading Standards or consumer watchdog Which?, to take action against rival companies that engage in copycat packaging.

UK skills minister Nick Boles, said, though, that the government had concluded from its consultation and review not to give businesses the power to pursue civil injunctions against copycat packagers on their own.

"Brands are important to the UK economy and it is clear from the report that positive brand innovation is important to consumers," Boles said in a parliamentary statement. "Following the review, I conclude there is little clear evidence that the use of similar packaging is causing any significant consumer detriment or hindering competition or innovation."

"There would be risks of unintended consequences if we changed the status quo, given the uncertainty around the evidence and the effects of the change, particularly in respect of the litigation that would result, and on enforcement. More generally, it would be difficult to reconcile granting this enforcement power with the government’s deregulatory objectives," he said.

Expert in brand protection Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "It seems like the government realised that in order to give a new civil remedy to deal with copycat packaging it would have to re-write the applicable rules of evidence. If it had chosen to do so the unintended consequences for other intellectual property and passing off actions would have been tremendous. This placed the whole idea in the ‘too difficult’ box, especially when there was no definitive evidence of ‘consumer harm’.”