Tesco and M&S: the era of dessert sandwiches and the issue of IP whilst responding to consumer trends

In the competitive world of retail, product innovation evolving with consumer demand can lead to the emergence of distinct trends. An example has come to light this summer, where two of Britain's largest supermarkets unveiled products that blurred the line between lunch and dessert:

• Marks & Spencer's Strawberries and cream "Sando" debuted in June, inspired by Japan's fruit sandwiches and timed for the Wimbledon season.

• Tesco's Birthday Cake Sandwich followed this month, celebrating the 30^th anniversary of the Tesco Clubcard with jam, frosting, and sprinkles between brioche-like bread.

Both are limited edition, visually striking "dessert sandwiches". The fact that both of these products were launched in such close succession, and that both adopt a similar hybrid concept of blending dessert elements into a sandwich may suggest there is a wider emerging trend.  Within any given trend there is always the potential for tension as competitors look to create products which meet what consumers are looking for, without infringing third party IP rights.

Where businesses step too far and create products which look too similar to those offered by competitors, this can lead to allegations of trade mark, design or other IP infringements.  

This article explores why lookalike products can be troublesome for businesses with a well-established brand, and considerations to protect innovators.

What is a lookalike product?

A lookalike product is a product which closely resembles another existing product in appearance, packaging, branding, or overall presentation.

Lookalikes frequently appear in competitive markets like supermarkets, where retailers may develop items that imitate style, design, or concept of a competitor's offering, a branded product or simply to fit in with emerging trends. Lookalikes can damage a brand's reputation by causing confusion amongst consumers who think it is associated with lower quality products. This can lead to loss of trust, reduced pricing power, and diminished long term value.

Whilst English law allows businesses to protect their brands against such consequences, the type of protection available depends on what intellectual property rights are available to a business.

What protection is available?

Whilst the most appropriate types of protection available to a business depend on the individual facts of each case, we set out three of the most commonly used causes of action in recent case law:

Trade mark infringement

Historically, trade mark law has served as a cornerstone for brand protection. If businesses have trade mark registrations for their brand(s), they have the exclusive right to use those registrations, which means that they have easier rights of enforcement against competitors using identical or confusingly similar marks on the same or related goods and/or services.

Passing off

Another legal avenue is the tort of passing off, which serves to protect trades against misrepresentation that is likely to damage their goodwill. Passing off typically arises where one party seeks to present their goods or services in a manner that causes the public to believe they are associated with, or originate from, another established brand.

A well known modern example of passing off in action is the dispute between Marks & Spencer and Aldi concerning Aldi's Cuthbert the Caterpillar cake, which M&S alleged was a deliberate imitation of its long standing and well known Colin the Caterpillar product. M&S argue that Aldi's cake amounted to a misrepresentation by suggesting an association with the Colin brand, thereby exploiting M&S' goodwill and potentially causing damage to its reputation and sales. In that case, passing off was the primary cause of action pursued by M&S as part of its enforcement strategy (although ultimately the case ended up settling).

Passing off claims can be difficult and costly (creating a registered right and avoiding the need to rely on passing off is one of the reasons why trade mark registrations are strongly advised).  To succeed in  a passing off claim, a brand must show it has goodwill, that a competitor has misrepresented their product as being associated with the brand, and that this has caused or risks causing harm. Misrepresentation is an element which is difficult to establish, because there is always a possibility that consumers recognise that they are purchasing a copy, and even seek them out for their lower prices. If this the case, the misrepresentation element may fail, undermining a passing off claim.  

Registered design infringement

Protection of brands using registered rights does not have to be based solely on trade mark registrations (although they are a key right in protecting brands). Indeed, it is good for businesses to consider how their intellectual property rights can work together to achieve a full scope of protection where the brand involves a product.

Case law illustrates an increased strategic use of other intellectual property rights to protect a brand. For example, the use of registered designs, which protects the appearance of a whole or part of a product, including 2D images and 3D objects. An example of enforcement of design rights for supermarket lookalikes is the case of Marks & Spencer v Aldi, where the court found that Aldi had infringed M&S' registered designs when it sold gin bottles featuring a similar light up snow globe effect.

Key takeaways

• Trade mark registration is a crucial step to ensure effective enforcement against competitors who create product lookalikes. Without it, enforcement options are more limited (and often costly).
• There is value in having and understanding how your trade mark registrations and other intellectual property rights can work together in pursuing enforcement, or whether there is one intellectual property right which is most suitable to stop infringement.