Charlotte Tilbury’s high-end makeup palette retailed for £49, whereas Aldi’s “Broadway Shape and Glow” version cost just £6.99, later reduced to £4.99. Aldi, well known for its slogan “Like brands, only cheaper”, had made approximately £140,000 in sales before proceedings were brought against it and, perhaps of more significance, its lookalike product had attracted substantial media comment.
Islestarr’s claim focused on two main elements of the palette’s design: the “Starburst Design” on the external lid of the palette, which featured sunrays stemming from a diamond in the centre, and the “Powder Design” which was embossed on to each of the two makeup powders inside the palette. Islestarr claimed that its works were original artistic works and its copyright had been infringed.
Did copyright subsist?
The Judge considered the issue of fixation: whether copyright could exist in a powder design, which disappears once the product is used. Aldi submitted that the markings were transitory and therefore there was no fixation. The Judge dismissed Aldi’s argument and compared the position to the creation of sand sculptures or a bespoke wedding cake, both of which were capable of benefitting from copyright protection.
As to originality, Aldi’s argument that the designs were generic art-deco patterns also failed. After carefully considering the evidence on the creation of the designs, the Judge stated that he could see no “slavish copying” of other art-deco designs and found that the designs were original. Therefore, copyright subsisted in both designs.
Was there copyright infringement?
The Judge then considered infringement of the copyright. He undertook a visual comparison of the two palettes and concluded that similarities were substantial, both quantitatively and qualitatively. It was noted that Aldi’s designers admitted they were aware of the Charlotte Tilbury palette at the time Aldi’s own was designed. Aldi failed to provide a sufficient defence to show that the similarities were not the result of copying Islestarr’s design. As there was no real prospect of Aldi successfully defending the claim, summary judgment was granted.
Commentary
This case is a positive decision for brand owners plagued by discounted, lookalike versions of their products. IP enforcement is notoriously difficult in this area, particularly when it comes to passing off and trade mark infringement actions.
The key to tackling lookalike products is to identify the strongest IP right that the brand owner has in the particular product. Depending on the product, this might be a combination of rights. In this case, Islestarr did not pursue a passing off claim. Its strongest IP right was copyright.
To achieve success in a copyright infringement action, brand owners need to rely on the artistic elements of their product design and take steps to preserve evidence of the design process in order to prove originality.
How can Burges Salmon help?
If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson, Emily Roberts or your usual contact in our intellectual property team.
A link to the judgment can be found here.