New research has provided a roadmap through which judicial consistency in passing-off and lookalike cases could be achieved - but the key will be ensuring that judges embrace the latest scientific thinking. The study, launched by the British Brands Group, Speechly Bircham and Mountainview Learning, explores how shoppers make decisions, arguing that behavioural science provides judges with a predictable and quantifiable means of assessing confusion in trademark and passing-off cases.

The research is based on the premise that, faced with an extensive array of choices, shoppers rely on mental shortcuts – heuristics – to identify quickly the products they wish to buy. Drawing on recent developments in the brain and behavioural sciences, it considered the role of branding in two respects - the impact of reduced branding on consumer behaviour and the impact of copycat branding on consumer behaviour.

In the case of copycat branding, this first involved a comparison of cases where an established brand is displayed alongside a copycat brand with cases where the established brand was displayed alongside brands that were not perceptually similar. In this way, the goal was to measure the impact of a copycat brand on consumers’ ability to identify the established brand. A range of scenarios were assessed, finding that participants were slower to identify the key brand when a copycat brand was present. There was no difference in speed of recognition when a non-copy brand was present, suggesting “that it is the perceptual similarity of the copycat brand to the established brand that is driving the effects. It is likely that this perpetual similarity distracts or confuses consumers, impairing their ability to identify the key brand”.

The report then conducted analysis to investigate whether the presence of a copycat brand could cause participants to select the wrong brand, finding: “Participants were more likely to make an error when a copycat brand was present… in some cases, participants were choosing the copycat brand because they had mistaken it for the key brand.”

This assertion backs up research carried out by Centromarca, the Portuguese brands association. Speaking at the IP Business Congress this week, director general Beatriz Imperatori noted that around 50% of consumers reported having accidentally bought the wrong product because the packaging was similar. 

While a useful exercise, this week’s report notes that: “Whether a copycat makes a misrepresentation or takes advantage of its host’s goodwill is a question of fact and therefore evidence. The challenge for counsel is how to represent something in oral or written evidence that is essentially a process in the mind of the consumer… The way in which the misrepresentation operates on the ‘minds of the consumer’ represents serious evidential challenges.”

It notes that the presentation of evidence in passing-off cases has historically focused on calling witnesses to explain what the impact of the offending get-up was on them (how they were misled or confused), with confused and inconsistent evidence leading courts to instead rely on the judges’ own perceptions.

However, the report argues that “when we talk about a passing-off ‘misrepresentation’, what we are really (or should be) suggesting is that the copycat appropriates the heuristic trigger which the originator has spent time and money building. If the ‘strength’ of a brand may be equated with the speed with which a consumer can identify it, then we can test how a consumer actually responds when a copycat is present and perhaps how the consumer reacts to the copycat when the established brand is not present. Survey evidence fails to account for this.”

Noting that visual recognition and goodwill are inextricably intertwined, it therefore means that existing methods of providing evidence to a court do not fully “address what we know to be the process by which copycat packaging appropriates goodwill.” Instead it proposes the creation of virtual retail stores to allow identification of the components, individually or collectively, which stimulate the heuristic response.

The authors conclude: “There is no suggestion that a science-based approach to evidence should replace oral testimony or that judicial evaluation should be displaced. However, incurring the time and cost of pursuing a case relying solely on witness testimony, without the corroborating empirical verification, will continue to mean that advisors are making educated guesses as to whether a particular copycat will be, or can be proved to be, unlawful.

“As the courts become familiar with these techniques, greater reliance can be placed on this form of evidence. For the present it is likely to add a layer of corroboration and rational support for what the judges intuitively accept, but have difficulty explaining…  Both judicial comment and the evidence given in a number of high-profile cases are consistent with the hypotheses set out in this paper but, in the absence of a structured presentation of the evidence, judgments will remain unpredictable and vulnerable to individual biases and perceptions of particular judges.”

The building of a computer-simulated marketplace to test any number of variations is now underway, and John Noble, director of the British Brands Group, told WTR that, in the hope that courts will begin to consider such evidence, they will be distributing the study to judges and “specifically seeking to engage them in dialogue”.

Alex Carter-Silk, partner at Speechly Bircham, concludes: “Advances in behavioural science allow us to assess empirically whether a competing, similarly packaged product is unfairly free riding on those heuristics, misleading shoppers. Judges now have a powerful tool to understand and measure shopper behaviour and better assess confusion in trademark and passing-off cases, supplementing oral evidence and their judicial opinion.”

The key will be obtaining judicial embracement for this new concept.