Combatting “dupes” through a comprehensive IP strategy

The unique appearance of your product can be one of its strongest selling points. Visual distinctiveness allows your product to stand out in a crowd, acting as a visual marketing boost in addition to your brand name.

Unfortunately, this visual distinctiveness attracts imitators seeking to trade on your product’s reputation. Historically, this has been via knockoffs and counterfeits products passing themselves off as your genuine article but at lower prices due to inferior quality. Combatting knockoffs and counterfeits could typically be achieved with traditional trademark protection to your brand name and logo.

In recent years, there has been a sharp rise in the availability of “dupes” for high-profile consumer goods. Dupes are products which intentionally mimic the distinct design and packaging elements of a comparator product, but at a lower price. Unlike knockoffs and counterfeits, dupes do not attempt to deceive the consumer by pretending to be the genuine thing. Dupes are instead sold as their own, lower cost, “duplicate” of your product. They aim to invoke the recognition of your product to the consumer, based only on visual appearance.

The rise of dupes as a threat to your IP

While dupes have always existed, recent trends in social media have led to a shift in dupe culture. Dupes are now more likely to be openly flaunted, shared widely, and readily available through mainstream retailers and readily accessible online marketplaces. This change in consumer behaviour can cause a new competitive pressure-point for your business.

As dupes do not copy or mimic the name or branding of your product, they may sidestep traditional trademark protection. Dupes do not use the brand-name or product name that may be protected by a traditional word or design trademark, and relying solely on traditional trademarks to protect your products can leave you with a gap in IP protection when it comes to combatting them.

Fortunately, protection is available for the visual distinctiveness of your product, separate from a brand name or logo. Industrial designs and non-traditional trademarks are readily available forms of IP protection that protect your product’s visual distinctiveness and are a key part of any IP portfolio for consumer products.

Protecting your products from dupes with industrial designs and non-traditional trademarks

An industrial design protects the novel visual elements of your product that make it stand out to a customer, such as its shape, configuration, pattern, or ornament. Industrial designs act as a strong form of protection against dupes, as they protect the exact elements the dupe is relying upon for its sales.

Obtaining an industrial design is a relatively straightforward process. Industrial designs are considered to have a relatively low barrier to entry, as the design must simply be “novel”, meaning that the identical or substantially similar design has not been disclosed to the public. Industrial designs are best sought prior to the launch of your product, and no later than one year after your first public disclosure.^[1]

The drawback to industrial designs is that they provide a fixed term of protection, extending only to the later of 10 years from registration, or 15 years from filing the application. This term cannot be extended, so while industrial designs providing strong protection against the visually distinct elements of your product, that protection has a fixed expiry date.

Trademarks, in contrast, can be continually renewed so that your protection does not face an expiry date. However, given dupes may be able to sidestep traditional trademarks, these are often insufficient to protect your product.

Fortunately, so-called “non-traditional” trademarks (sometimes referred to as a “distinguishing guise”, and similar to “trade dress” protection in the United States) protect a variety of non-word marks such as three-dimensional shapes and product packaging. Non-traditional trademarks can therefore be used to provide similar protection to what is available from industrial designs. Non-traditional trademarks can be continually renewed, avoiding the concern of an expiry of protection that occurs for industrial designs.

Non-traditional trademarks can be slightly more onerous to obtain than traditional trademarks or industrial designs. For example, non-traditional trademarks for the three-dimensional shape of the product or its packaging may require evidence of “acquired distinctiveness” in the market when the application is filed.

Fortunately, industrial designs and non-traditional trademarks can be combined in a comprehensive IP strategy that fully protects your key products from dupes. Industrial designs can be used to protect your product immediately upon launch, allowing you to combat dupes in the early stages of your product’s lifespan. As industrial design protection nears its end, a non-traditional trademark can be sought relying upon the product’s acquired distinctiveness over time. Once obtained, the non-traditional trademark can be continually renewed to provide ongoing protection.

By implementing a comprehensive IP strategy, and taking advantage of industrial designs and non-traditional trademarks, the visual distinctiveness of your product is best protected for the entire lifespan of your product.

Best practices for combatting dupes

Obtaining IP protection that can be used against dupes is one thing, actually combatting dupes that enter the market is another. Like all IP rights, while industrial designs and non-traditional trademarks provide you with a degree of formal market exclusivity, it falls to you to enforce those IP rights against any infringing competitors.

Simply obtaining registered IP protection may deter some competitors, but for your highly sought-after products you can expect that active steps to prevent dupes from entering the marketplace will have to be taken. Fortunately, there are a few best practices you can take to combat dupes using your industrial designs and non-traditional trademarks:

• Monitor online marketplaces and issue marketplace takedowns: Dupes are commonly sold through online marketplaces. Many major online marketplaces will allow you to assert your industrial designs and non-traditional trademarks via an IP enforcement mechanism, which can result in removal of the infringing sales listing. Dupes can therefore be combatted at the point of sale by proactively monitoring online marketplaces and preparing targeted takedown requests.
• Send “Cease and Desist” letters: In some cases, manufacturers of dupes are not aware of the IP protection covering your product. Making a competitor aware of your rights via a “Cease and Desist” letter may be sufficient to stop sales of the dupe, given the fear of IP enforcement proceedings. Cease and Desist letters can be effective when the dupe’s sales are not made via an online marketplace, or one which lacks an IP enforcement mechanism.
• Request seizure by the CBSA: The Canadian Border Services Agency allows IP rights holders to request assistance in intercepting infringing goods at the point of import into Canada. This program is available for registered trademarks, so if your IP portfolio includes non-traditional trademarks you can take advantage of this assistance to target dupes when they are manufactured abroad.
• Commence a Court infringement action: All IP rights can be asserted through an infringement action before either a provincial court or the Federal Court of Canada. If successful, a Court’s Judgment can provide an injunction against future sales and importation of the dupes. In addition, unlike the other enforcement options, an infringement action is the only means through which you can claim monetary remedies on account of a dupe’s sales. This could include recovery of the monetary value of your sales lost to the infringing dupe, or alternatively an accounting of the profits made by the defendant in unfairly selling the infringing dupe.

Just as a broad IP strategy is needed to protect your product against dupes, the best approach for combatting dupes typically involves multiple, and often escalating, enforcement approaches. As each enforcement path requires you to have first obtained protection for the visual distinctiveness of your product, enforcement is best considered within your comprehensive IP strategy.

The assessment of IP rights, a product’s visual distinctiveness, and best approaches for enforcing those rights are a complex and fact-specific analysis. Please contact us if you would like to discuss the specifics of your IP protection strategy, to assess whether action can be taken against any existing dupes to your products, or to explore the specifics of any enforcement mechanisms. In addition, Gowling WLG's online monitoring and brand protection platform, Saturn, can help automate your market monitoring process. Find more details on Saturn here.