Jellycat continue the fight against copycat products

Jellycat is an example of a brand that is doing exactly this, with reports indicating that it has commenced proceedings against Next and Hamleys in the High Court for copying its products. While details of the claims have not yet been made public, if they follow the pattern of Jellycat’s previous enforcement actions, they are likely to include allegations of trade mark infringement and passing off.

A successful trade mark infringement claim requires the claimant to be able to demonstrate that a third party has used its registered trade marks without authorisation. This is relatively straightforward where a third party has used an identical or highly similar sign to a registered trade mark. However, most brands do not have all their products registered as trade marks and instead rely on the reputation of the brand and the “look and feel” of their products to pursue a claim for passing off.

A passing off claim requires the claimant to demonstrate that they have goodwill attached to their products, and that another party is offering similar products in a way that is likely to mislead consumers into believing that the products are associated with the claimant.

Jellycat is well known for selling soft toys which are based on animals or everyday products, with added facial features. However, Jellycat cannot bring a claim simply because other companies, such as Next and Hamleys, are adding facial features to their products. Instead, Jellycat would need to demonstrate that consumers associate the stylization of specific facial features with their brand and that the other companies are copying that specific style.

Even if Jellycat can establish goodwill for specific product features, it will be limited to the type of products consumers generally associate them with (namely, soft toys). This means that they will face another hurdle where companies are adding facial features to other useable products, as Next have done with a doorstop. This is because consumers are less likely to make an association between the two products and the respective brands from which they originate.

There is a fine line between unfair use and fair competition, but if this dispute proceeds to court, it should provide some clarity on the extent that the overall style of a brand can be protected, particularly where the products are quite distinctive from those sold by other brands.

In the meantime, brands should continue to take steps to protect their IP and consider registering distinctive product designs as trade marks to strengthen the position should any competitors launch copycat products.

If you have any questions about registering trade marks to protect your products and brands, please get in touch with Cathrine Ripley at cathrine.ripley@fsp-law.com or please contact our Commercial, IP & Technology Team.