Defence against dupes: A practical guide

1.    Introduction

The rise of dupes, which are products that are designed to duplicate the appearance of products from established brands, has resulted in new brand protection-related challenges for businesses. Whilst dupes are generally not outright copies of products from established brands, they can often be in a legal gray area between acceptable inspiration and actionable infringement.

This article will explain what dupes are and highlight some recent cases involving dupes. It will then examine the difficulties with taking action against dupes in Singapore. Finally, the article will provide some practical tips for brand owners to defend themselves against dupes in Singapore.

2.    What are Dupes

Dupes are created and marketed as affordable alternatives that replicate the look and feel of higher-end or “cult” products. Examples of dupes can include:

   I. A handbag which has similar stylistic elements (e.g. shape of the bag, appearance of decorative details) to that of an established brand’s handbag but is marketed under a different name.

   II. A perfume which has a similar bottle shape and similarities in its packaging (e.g. colour combination, pattern) to that of an established brand’s perfume and is marketed as being inspired by the established product.

   III. A sofa which has similarities in its appearance (e.g. colour, fabric texture and shape) to that of an established brand’s sofa but is marketed with no brand affiliation.

The following are some general differences between dupes and counterfeits:

Dupe culture appears to have risen to prominence through influencers’ user-generated content like “Save vs. Splurge” videos and “Get the look for less” posts on social media platforms like TikTok and Instagram. Such social media content both increased the awareness of dupes and the ease of purchasing them. Since then, dupes have become widely featured and available in more mainstream retail and media outlets.

Whilst dupes are usually found in the fashion and beauty industries, they can exist in any industry whereby the visual aspect of the product strongly influences consumers’ purchasing behaviour.

3.    Recent Cases Involving Dupes

Lately, established brands have taken action against dupes in a slew of cases across various jurisdictions. The following are some examples of such cases:

I.    Glow Recipe filed a lawsuit in USA against MCoBeauty alleging that MCoBeauty’s “Hydrate & Glow Ultra-Dew Serum” copied aspects of the bottle design and marketing tactics of Glow Recipe’s “Watermelon Glow Niacinamide Dew Drops”. This is an ongoing case, and no decision has been issued yet.

Glow Recipe’s “Watermelon Glow Niacinamide Dew Drops”	MCoBeauty’s “Hydrate & Glow Ultra-Dew Serum”

II.    The English Court of Appeal held that Aldi Stores’ “Taurus Cloudy Lemon Cider” infringed the trade mark of Thatchers Ciders’ “Thatchers Cloudy Lemon Cider”.

Thatchers Ciders’ “Thatchers Cloudy Lemon Cider”	Aldi Stores’ “Taurus Cloudy Lemon Cider”

III.    The High Court of Eastern Denmark held that Steve Madden’s “Grand Ave” shoe infringed the copyright of Ganni’s “Buckle Ballerina” shoe.

Ganni’s “Buckle Ballerina” shoe	Steve Madden’s “Grand Ave” shoe

4.    Challenges with Taking Action Against Dupes in Singapore

Taking action against dupes generally involves the following areas of law: trade marks, designs, copyright and passing off.

One key challenge of taking action against dupes in Singapore is that, to ensure sufficient brand protection coverage, brand owners often need to rely on owning a combination of IP rights, each of which has gaps in its scope of coverage.

I.    Trade mark and designs rights are registrable IP rights that generally do not protect functional elements of a product. Further, design rights do not protect colours or colour combinations if they are not used with the shape, configuration, pattern or ornamental feature of the product.

II.    For a trade mark to be registered, it must be distinctive such that consumers would associate it exclusively with the brand owner.

A. Certain striking/recognisable elements of the product, like the shape of the product or colour combination of the product’s packaging, may not be registrable as trade marks due to their lack of inherent distinctiveness. This is because consumers generally regard names and logos, rather than appearance-related features of the products, as indicating the origin of the products.

B. Further, depending on when the trade mark applications were filed, these elements may not have been sufficiently used in relation to the product to have acquired distinctiveness, such that consumers have come to rely on that element as a guarantee of origin of the products.

C. As such, this “distinctiveness” requirement is arguably more difficult to satisfy than the “novelty” requirement for design protection or the “originality” requirement for copyright protection.

III.    Depending on the number of striking/recognisable elements in the product, it can be prohibitive in terms of costs and time to apply to register trade mark and design rights to cover most/all of them.

A. This is especially so for trade marks which must undergo a substantive examination process by the Intellectual Property Office of Singapore and be published for potential opposition by third parties, in order to be registered.

B. Given the short product lifecycles of the industries in which dupes are generally found, the dupes market is likely to have already moved onto the next big thing by the time trade mark and/or design rights have been acquired.

IV.    As there is no copyright registration system in Singapore, there can be a substantial evidentiary burden in proving authorship, originality and ownership of a copyrighted work.

V.    Copyright generally does not protect functional elements of a product, elements that have been or could have been registered as designs or elements that are industrially applied. Further, to receive copyright protection, an element must fall within a prescribed list of categories of works under the Singapore Copyright Act, each of which has its own set of protection criteria.

Another key challenge is that, even if the brand owner has no issue with showing the subsistence and ownership of the relevant IP rights, there can be difficulties in enforcing these rights.

I.    In Singapore, only consumer confusion at the point of sale is considered actionable trade mark infringement. Post-sale confusion (e.g. whereby third-party observers mistakenly associate the dupe with the established brand) is not actionable.

A. In many cases, consumers do not buy dupes from Company ABC because they were confused and thought that these dupes are from Company XYZ or a company that is related to Company XYZ. They know that the dupes are from Company ABC and bought these dupes precisely because they look and feel like they are products from Company XYZ but are available at a lower price point.

B. As such, it may be difficult for brand owners to establish the “likelihood of confusion” (LOC) requirement in a trade mark infringement claim. Similarly, it may be difficult for brand owners to establish the element of misrepresentation in a claim for passing off, whereby the defendant needs to have misrepresented to the public that its products are the brand owner’s products or emanate from a source that is economically linked to the brand owner.

II.    If a brand owner can show that its trade mark is “well known to the public at large” in Singapore, it does not have to establish the LOC requirement in a trade mark infringement claim.

A. The brand owner simply needs to show that the dupes would cause dilution in an unfair manner of the distinctive character of the brand owner’s trade mark or would take unfair advantage of the distinctive character of the brand owner’s trade mark.

B. This can be more easily established than the LOC requirement in the context of dupes. Even if consumers were not confused/unlikely to be confused by the dupes, the main driving force behind the consumers’ demand for dupes is that they look and feel like the established products. As such, through selling the dupes, the defendant has arguably ridden on the coattails of the brand owner’s efforts in developing, producing and marketing the established product.

C. Still, in practice, few brand owners can successfully invoke this as there is a high evidentiary threshold to show that one’s trade mark is “well known to the public at large” in Singapore.

III.    In design and copyright infringement claims, it is key for the brand owners to satisfy the “substantiality” requirement to succeed on these claims. Consumer confusion does not need to be shown.

A. To succeed in a design infringement claim, a brand owner must show, amongst other things, that the defendant has used the same design or a design that is not substantially different from the registered design.

 B. To succeed in a copyright infringement claim, a brand owner must show, amongst other things, that the defendant has taken a substantial part of the brand owner’s work.

 C. As dupes are generally not intended to be slavish copies of established products but merely to capture their essence that the defendant can avoid enforcement action if the dupe has enough elements that differ substantially from the established product.

D. Still, this can be mitigated if the brand owner deliberately planted errors or irrelevant points of detail in its work which also appear in the defendant’s allegedly infringing work.

5.    Strategy for Taking Action Against Dupes in Singapore

To effectively defend oneself against dupes, brand owners should establish a comprehensive brand protection strategy that begins from the conceptualisation of the product and lasts throughout the product’s lifecycle.

Below are some practical steps which brand owners can take to ensure that they are prepared to defend themselves against dupes (arranged in chronological order):

6.    Conclusion

By evoking but not outright copying established products, dupes can often evade legal action being taken against them. While Singapore does not offer a silver bullet in defending oneself against dupes, a structured strategy that is based on timely registrations, as well as active monitoring and evidence collection can still help brand owners to take action against dupes. The key lies in early preparation, coordination between the design, marketing and legal teams, and choosing the right legal tools for the right situations.

Written by: Mr Tony Yeo and Ms Kit Kuan Yuen