Battling Dupes: How fashion & beauty brands can protect products and consumers this holiday shopping season in North America

As Black Friday approaches this week, and the Christmas shopping season begins, shoppers will be rushing to the stores to buy gifts for their loved ones. They may find themselves confused however, with copycat products or “dupes” as they are known, flooding the market in many cases at a considerable discount, making them question whether a product is real or not. Dupes are often prevalent in the highly competitive and lucrative fashion and beauty industry.  

Brand owners can fight back and seek remedies from the courts to protect consumers and ward off competitors looking to take advantage of trending products with look alike versions and dupes. In this article we will look at a few cases involving trade dress infringement that shed light on the available legal tools and precedents in the U.S. and Canada, that could be used in the battle against dupes. 

An “elf” on the cosmetics shelf in the U.S. 

Last December in a U.S.  trade dress case Benefit Cosmetics LLC v e.l.f Cosmetics a California federal court judge released a decision that revealed the extent to which dupes may be allowed to exist in the marketplace without getting into trouble with the owners of the original products that were duped. 

In this case the defendant e.l.f. Cosmetics (“e.l.f.”) was sued for trade dress infringement by Benefit Cosmetics LLC (“Benefit”) after e.l.f. released a mascara product Lash 'N Roll that allegedly copied Benefit’s packaging materials for its popular mascara, Roller Lash (featuring a pink top, a black base, and pink lettering on the black portion of the product that matches the pink of the top) that was released about 7 years earlier. 

Notably, despite the court acknowledging that Benefit had commercial rights to its trade dress for its mascara product, which included primary packaging that was similar to that used by e.l.f., the court ultimately found that e.l.f.’s secondary packaging was sufficient to distinguish its product from Benefit’s product. Moreover, despite e.l.f.’s own admission that it essentially took inspiration from Benefit’s mascara product, the court determined that there was no intent to deceive the consumer of the product’s origin, and e.l.f’s product also included its own distinguishable branding elements that distanced the court from finding an intent to outright copy Benefit’s product. 

Nevertheless, this decision should not be taken as a precedent permitting all dupes across the board from infringement and there were a number of other factors that worked against Benefit’s case. For example, while the parties’ respective mascara products co-existed for two years, Benefit failed to provide sufficient evidence of actual consumer confusion (though such a finding is not strictly required for the purposes of finding infringement). Further, the court found that cosmetic consumers are sophisticated purchasers who would immediately notice the price difference between the products (i.e., single digit vs. double-digit price), and that e.l.f. generally sold its products to big-box stores whereas Benefit generally sold its products in specialty beauty stores. 

 Trade dress in Canada: Non-traditional marks and Industrial Designs 

In Canada, trade dress protection was also known as protection for “distinguishing guises”, which term was replaced in 2019 with “non-traditional marks” in the form of a “three-dimensional shape” and/or a “mode of packaging goods”, but otherwise has largely remained the same in principle. For instance, the first of currently five “mode of packaging goods” type marks is a “3D Box Design” which is used in the popular Ferrero Rocher chocolate gift boxes seen at this time of year (as shown below). 

While common law protection is available in Canada for such marks, to benefit from the exclusive rights afforded to a registered mark, evidence of acquired distinctiveness in Canada as of the filing date of the trademark application is required.  

Moreover, with current Canadian trademark examination standards being particularly strict in terms of the extent of evidence required to establish such distinctiveness, if you are a brand owner, one strategy to  consider for unique packaging design of a product is seeking protection using an industrial design (or design patent) to cover the unique aesthetic features of said packaging or product design.  

While industrial design protection is limited to a maximum term of 15 years in Canada, this time frame may well be sufficient to allow for sales and use of the unique packaging to build up for the purposes of filing evidence of acquired distinctiveness for the same packaging design to ultimately obtain a registered trademark that may be renewed indefinitely. 

Brand owners can consider these options to protect trade dress and guard against copy cats and dupes of their more popular products. More examples and insights can be found in our Global Anti-Counterfeiting ebook.

If you have any questions on brand protection and trade dress in Canada, you can reach out to our trademarks team.