THE LOOKALIKE PROBLEM: THE ADEQUACY OF SECTION 10(3) OF THE TRADE MARKS ACT 1994 IN PROTECTING UK FASHION AND LUXURY BRANDS

ABSTRACT

Contemporary UK trade mark law is characterised by the rising tension of budget retailers’ lookalike products targeting the goods of established fashion and luxury brands. This article examines whether section 10(3) of the Trade Marks Act 1994 adequately and consistently protects luxury brands against competitors whose products take unfair advantage of these brands’ reputation. The statute and UK case law analysis demonstrate the key argument that although section 10(3) is structurally sound, it is internally inconsistent. This is particularly illustrated in this provision’s third limb of unfair advantage, which requires evidence that is practically difficult to provide. The article further identifies this issue in the post-Brexit divergence from the judgments of the Court of Justice of the European Union, which introduces significant unpredictability for luxury brand owners. This is concluded by recommendations for reform, which would strengthen UK fashion and luxury brands’ protection against the lookalike problem.

Keywords: Trade Marks Act 1994, Intellectual Property, Luxury Brands, Lookalike Products, Unfair Advantage, Post-Brexit UK Trade mark Law

INTRODUCTION

The luxury retail sector in the United Kingdom (UK) was valued at approximately £7.7 billion in 2025, with an annual increase of 11.5%, illustrating the legal significance of protecting fashion brands’ identity.[1] Every product in the luxury fashion industry represents more than mere physical quality, as its value is derived from the brands’ creativity, exclusivity and reputation built over decades. The continuous rise in luxury brands’ revenue led to budget retailers increasingly creating products which visually resemble luxury goods without infringing the original trade mark.[2] Subsequently, the lookalike problem has become one of the key challenges faced by UK fashion brands in intellectual property (IP).

The legal question arising from this tension is not whether copying of the luxury product occurred, but whether the lookalike crosses the line constituting actionable trade mark infringement. This threshold is set by three requirements of similarity of sign, reputation and unfair advantage or detriment in section 10(3) of the Trade Marks Act (TMA) 1994. Initially, this provision was designed to protect reputable brands from suffering an unfair exploitation of or detriment to their trade marks’ distinctive character or repute. Nonetheless, consistent application of section 10(3) has proven difficult over time, and this issue became further complicated by the UK’s post-Brexit departure from the jurisprudence of the Court of Justice of the European Union (CJEU), which no longer binds domestic courts.

This article examines whether section 10(3) of the TMA 1994 provides adequate and consistent protection for UK fashion and luxury brands against lookalike products. It discusses the statute’s CJEU origins, post-Brexit changes, the provision’s three threshold requirements and key case law impacting the protection of luxury brands’ trade marks. Through this analysis, the article argues that although section 10(3) is structurally sound, it is internally inconsistent and illustrates an urgent need for legislative reform.

BACKGROUND

Section 1 of the TMA 1994 defines a trade mark as a sign capable of distinguishing “goods or services of one undertaking from those of other undertakings”. In Case C-487/07 L’Oréal SA v Bellure NV, the Court held that this protection encompasses quality, advertising, communication and investment functions, besides the trade mark’s original function.[3] In luxury fashion, this protection covers packaging and brand representation as well as the brand name.

Section 10(3) of the TMA 1994 provides that a registered trade mark is infringed where a person (1) uses a sign “identical with or similar to a trade mark” (2) which has “a reputation in the UK” (3) in a way which is “without due cause” and takes “unfair advantage of, or is detrimental to, the distinctive character or repute” of that mark. This provision does not require the sign to cause possible customer confusion, unlike section 10(2) of the Act.[4] This distinction implies that actionable infringement can arise even where lookalikes resemble luxury products without directly misleading an average consumer about their origin.

TMA 1994 section 10(3) initially implemented Article 5(2) of the Trade Marks Directive 89/104/EEC, but was later amended by section 7(2) of the Trade Marks (Proof of Use, etc.) Regulations 2004. This change reflected the judgment in Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd which confirmed that the provision must not only cover trade marks on dissimilar goods, but also identical and similar ones.[5] This broader scope benefits luxury brand owners since they can assert that infringement occurred based on their trade mark’s reputation, without establishing confusion.

Post-Brexit, the CJEU decisions are no longer binding on domestic courts, and the retained CJEU authority only carries persuasive weight. This creates uncertainty for luxury brands relying on the CJEU interpretations on the application of section 10(3) of the TMA 1994. Nevertheless, passing off, which prevents a competitor from passing their goods off as if they were the trader’s, remains a parallel course of action.[6] As established in Reckitt & Colman Products Ltd v Borden Inc, this requires the claimant to have goodwill, which gets damaged by the defendant making a publicly deceiving misrepresentation.[7] Therefore, luxury brands’ position could be strengthened by relying on both courses of action, though this article focuses on section 10(3) TMA 1994.

LEGAL ANALYSIS

Condition 1: Similarity of Sign

Section 10(3) TMA 1994 requires a person to use a sign which is identical or similar to the original trade mark. While identicality is unambiguous, similarity is assessed by the overall customer impression that the sign creates by its “visual, aural and conceptual” elements.[8] In fashion law, this raises the question of whether mere visual likeness, for example through product colour schemes, packaging or the general presentation, can constitute sufficient similarity of a sign.

In Iconix Luxembourg Holdings v Dream Pairs Europe, Miles J held that the similarity between the signs was insufficient to constitute infringement due to the absence of a link “in the mind of the average consumer”.[9] This confirms that similarity under section 10(3) TMA 1994 requires a mental connection between the claimant’s mark and the defendant’s sign, so mere visual likeness is not enough. However, a further practical difficulty is that although logos can satisfy this requirement, colour schemes or packaging shapes used by a luxury brand might not be independently registrable despite representing the brand’s identity. In such situations similarity under section 10(3) TMA 1994 cannot provide protection, so the claimants would resort to a claim under passing off.

Condition 2: Reputation

The second condition under section 10(3) TMA 1994 requires the registered trade mark to have a reputation in the UK. While the statute does not define “reputation”, Case C-375/97 General Motors Corporation v Yplon SA established that it must be “known by a significant part of the public concerned by the products or services covered by that trade mark”.[10] Nonetheless, since the UK departed from the EU, this threshold is only persuasive and remains flexible in domestic courts’ interpretation. Yet, established luxury brands, such as Prada or Christian Louboutin, can easily satisfy this condition. This requirement rather poses an issue for smaller fashion brands, whose trade marks might be distinctive among niche customers, but not the general public. Therefore, the second condition in section 10(3) TMA 1994 operates more effectively as a tool protecting bigger, more reputable luxury brands, not the whole fashion industry.

Condition 3: Unfair advantage or detriment

The last condition under section 10(3) TMA 1994 requires the use of a sign without due cause and operates through two distinct limbs: taking unfair advantage of the distinctive character or repute of the mark, or causing a detriment to it. Unlike the first two conditions, which can be assessed objectively, this requirement is internally inconsistent and represents a significant analytical weakness of section 10(3) TMA 1994 in protecting fashion brands. Similarly, the due cause defence is narrow and requires a legitimate reason for overriding the claimant’s trade mark rights, such as fair competition in Case C-323/09 Interflora v Marks & Spencer.[11]

The unfair advantage limb, often described as free-riding, is engaged when the defendant derives a benefit from associating their sign with the claimant’s mark.[12] In the luxury fashion context, budget retailers producing lookalikes benefit from the luxury brands’ reputation built through investment without contributing to it. Since this condition does not require showing any direct harm caused to the claimant,[13] Floyd LJ in Argos Ltd v Argos Systems Inc described the unfair advantage as “odd” when compared to the common preface for other infringement claims under section 10 TMA 1994.[14] As Bently et al. observe, this creates an internal paradox within section 10(3) TMA 1994, since the same provision requiring proof of detriment in the second limb abandons this condition in its first limb.[15] This conceptual inconsistency creates uncertainty for courts as to the correct approach to assessing unfair advantage. Since budget lookalikes give consumers access to premium goods at lower prices, this could serve a legitimate competitive function rather than constituting an unfair advantage. Yet, section 10(3) provides no clear answer, and UK courts have not addressed these issues directly. Therefore, unfair advantage could be examined through consumer perception, the defendant’s conduct, or perhaps also the claimant’s commercial position.

The detriment limb comprises two separate harms to the claimant: blurring (dilution) of the mark’s distinctiveness and tarnishment of its repute.[16]  Tarnishment could be easier to establish, as a budget retailer’s lookalike evokes the luxury brand, which then risks undermining the trade mark’s commercial value. In Case C-59/08 Copad v Christian Dior Couture, the trade mark’s quality function was held to encompass “an aura of luxury”, so any association with the luxury goods by the retailer can seriously damage this function.[17] Similarly, Bently et al. observe that associating, marketing or advertising a prestigious mark with down-market goods adversely damages a luxurious image.[18] Since Copad is now only persuasive in UK courts, the current framework is uncertain as compared to the previously settled principles. Contrarily, dilution requires evidence that the trade mark’s distinctive character is undermined by association with similar signs. This introduces a higher threshold as opposed to tarnishment, thus luxury or fashion brands may face difficulty in satisfying this condition in practice.

Overall, section 10(3) TMA 1994 is structurally sound, but also internally inconsistent. Its three conditions broadly capture the lookalike problem, but the unfair advantage limb operates without a settled analytical framework. The post-Brexit departure from binding CJEU authority increases the uncertainty in interpretation, making the entire section 10(3) TMA 1994 unpredictable in application and inadequate in protecting UK fashion and luxury brands.

CASE LAW DISCUSSION

Thom Browne Inc v Adidas AG[19]

Thom Browne (TB) is a global high-end luxury brand, known for its tailored menswear and womenswear, while Adidas is a German sportswear brand, famous for its three-stripe symbol.

In this case, TB filed a lawsuit to invalidate 16 of Adidas’s registered three-stripe position marks on clothing and footwear. Adidas then counterclaimed under sections 10(2) and 10(3) TMA 1994, arguing that TB’s clothing with a four-bar design took unfair advantage of its repute. TB’s central argument was that Adidas’ marks failed under section 1(1) TMA 1994, as they were broadly described and lacked an objectively ascertainable sign.

The High Court held that 8 of Adidas’ trade marks were invalid and dismissed the section 10(3) counterclaim as no unfair advantage could arise. This decision resulted from the absence of a “serious risk of detriment”, “likelihood of dilution” and no likelihood that an average consumer would “perceive a link” between the signs.[20] Subsequently, in TB Inc v Adidas AG [2025] EWCA Civ 1340, Adidas’ appeal concerning the invalidity of the findings was dismissed.

This case illustrates that even the most famous trade marks remain vulnerable if they are imprecisely registered. The judgment also reinforces that protection under section 10(3) TMA 1994 requires demonstrating a mental link between both signs to establish the unfair advantage. Compared to Thatcher’s Cider Company Ltd v Aldi Stores Ltd, where section 10(3) infringement arose because the lookalike intentionally evoked Thatcher’s famous cider,[21] the difference in outcomes shows that the unfair advantage limb is fact-sensitive.

Lifestyle Equities v Royal County of Berkshire Polo Club Ltd[22]

Lifestyle Equities is a Dutch company owning the trademark for the Beverly Hills Polo Club (BHPC), representing a global fashion brand. Royal County of Berkshire Polo Club Ltd (RCBPC), however, is a UK-based polo club, which also sells branded clothing and accessories.

Lifestyle Equities brought a claim under sections 10(2) and 10(3) TMA 1994 against RCBPC, arguing that the horse and rider motif and words “Polo Club” infringed their BHPC trade mark. The High Court rejected the claim under section 10(3), holding that “an average consumer would make no link” between the BHPC mark and the RCBPC sign, and even if that happened no damage would result.[23] This judgment also considered that an average consumer would likely be aware of other brands using similar generic polo-themed signs, such as Polo Ralph Lauren.[24]

This decision shows the importance of assessing trade marks as a whole, since certain motifs might be used by other parties and not be unique. Regarding section 10(3) TMA 1994, the judgment shows that even where visual similarity exists, if the trade mark’s elements are generic enough, an average consumer is unlikely to establish a link between the two brands. Thus, despite the possible judicial inconsistency in the unfair advantage, the case law is settled on the requirement of a mental link in a consumer’s mind.

CRITICAL ANALYSIS AND FINDINGS

Considering the analysis above, section 10(3) TMA 1994 faces three limitations that undermine its adequacy in protecting UK fashion and luxury brands.

Firstly, this provision imposes an evidential burden requiring proof of a mental link in the consumer’s mind, the defendant’s benefit resulting in an unfair advantage or significant harm causing a detriment. This threshold is demanding, as illustrated by Lifestyle v RCBPC[25] and TB v Adidas[26], where the section 10(3) TMA 1994 claims were dismissed despite the visual similarity between the signs. Despite both these cases ruling in favour of the smaller brands, similar companies without the capability to fund extensive infringement proceedings might find this burden difficult to satisfy. Therefore, section 10(3) TMA 1994 risks creating an internal structural inequality by functioning more effectively for luxury brands with greater profits.

Secondly, as recognised by Bently et al.[27] and Floyd LJ in Argos v Argos,[28]  the unfair advantage limb creates a conceptual paradox within section 10(3) TMA 1994. This internal inconsistency leaves UK courts without a settled analytical framework resulting in fact-sensitive and unpredictable outcomes for claimants. In TB v Adidas the four-stripes sign was viewed as a branding element ,[29] while in Thatcher’s v Aldi the sign was held to deliberately exploit the mark’s reputation .[30] Although both cases involved the mental link and allegations of unfair advantage, the difference in judgments shows the unpredictability of section 10(3) TMA 1994 which prevents brand owners from reasonably assessing the likelihood of their claim’s success.

Thirdly, post-Brexit the application of section 10(3) TMA 1994 is characterised by an uncertainty in interpretation. Its core concepts of reputation and detriment originate from CJEU authority, such as Copad v Dior[31] and General v Yplon[32], which are now only persuasive and leave domestic courts without a consistent legal framework.

These limitations confirm that section 10(3) TMA 1994 is structurally sound, but internally inconsistent, therefore requiring legislative reform. These weaknesses are further illustrated by the scarcity of reported UK cases involving both fashion and luxury brands and section 10(3) TMA 1994, suggesting that brands prefer filing passing off claims. Despite the UK’s divergence from CJEU authority, the courts should consolidate an approach from key lookalike cases into a coherent and predictable legal framework. Clearer judicial guidance on the application of its core concepts, the evidential threshold and the mental link requirement would also strengthen the protection offered by this provision.

CONCLUSION

Section 10(3) TMA 1994 is structurally sound as its three conditions broadly capture the lookalike problem, but it remains internally inconsistent, which negatively affects its adequacy in protecting UK luxury and fashion brands. Overall, the unfair advantage limb lacks a clear framework, the evidential burden risks producing unpredictable outcomes, while the post-Brexit divergence from CJEU authority increases this legal uncertainty. These limitations demonstrate that the need for reform is urgent, not just desirable. As budget retailers increasingly exploit luxury brands’ reputation and produce lookalikes, the consequences of this provision’s inadequacy will only become more detrimental over time. Therefore, judicial guidance should clarify the unfair advantage framework and application of core concepts. Legislative reform, however, should create a coherent legal framework based on existing case law on lookalikes, for example by consolidating the mental link requirement and the evidential threshold. These solutions would significantly strengthen the adequacy of section 10(3) TMA 1994 in protecting UK luxury and fashion brands against the increasing lookalike problem.

BIBLIOGRAPHY

Primary sources – legislation:

1. Trade Marks Act 1994
2. Trade Marks (Proof of Use, etc.) Regulations 2004
3. Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [1989] OJ L40/1

Primary sources – EU case law:

1. Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537
2. Case C-59/08 Copad SA v Christian Dior Couture SA [2009] ECR I-03421
3. Case C-375/97 General Motors Corporation v Yplon SA [1999] ECR I-05421
4. Case C-323/09 Interflora Inc v Marks and Spencer plc [2011] ECR I-08625
5. Case C-487/07 L’Oréal SA v Bellure NV [2009] ECR I-05185

Primary sources – UK case law:

1. Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211
2. Iconix Luxembourg Holdings SA v Dream Pairs Europe Inc [2023] EWHC 706 (Ch)
3. Intel Corporation Inc v CPM UK Ltd [2009] ETMR 13
4. Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2023] EWHC 1839 (Ch)
5. Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873
6. Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24
7. Thatcher’s Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5
8. Thom Browne Inc v Adidas AG [2024] EWHC 2990 (Ch)
9. Thom Browne Inc v Adidas AG [2025] EWCA Civ 1340

Secondary sources – literature:

1. Lionel Bently and others, Intellectual Property Law (6^th edn, OUP 2022)

Secondary sources – online sources:

1. Eliza Dunington, ‘Luxury Product Retailers in the UK, Industry Data and Analysis’ (IBISWorld, March 2026) <https://www.ibisworld.com/united-kingdom/industry/luxury-product-retailers/14634/> accessed 4 June 2026
2. Sonja Hoffmann and others, ‘Client advisory – trends in dupes & super-fakes in luxury retail’ (White & Case, 9 January 2026) <https://www.whitecase.com/insight-alert/client-advisory-trends-dupes-super-fakes-luxury-retail> accessed 4 June 2026

[1] Eliza Dunington, ‘Luxury Product Retailers in the UK, Industry Data and Analysis’ (IBISWorld, March 2026) <https://www.ibisworld.com/united-kingdom/industry/luxury-product-retailers/14634/> accessed 4 June 2026.

[2] Sonja Hoffmann et al., ‘Client advisory – trends in dupes & super-fakes in luxury retail’ (White & Case, 9 January 2026) <https://www.whitecase.com/insight-alert/client-advisory-trends-dupes-super-fakes-luxury-retail> accessed 4 June 2026.

[3] [2009] ECR I-05185, [58].

[4] Intel Corporation Inc v CPM UK Ltd [2009] ETMR 13, [30].

[5] [2003] ECR I-12537.

[6] Lionel Bently et al, Intellectual Property Law (6^th edn, OUP 2022) 871.

[7] [1990] 1 All ER 873.

[8] Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [52].

[9] [2023] EWHC 706, [169].

[10] [1999] ECR I-05421 [26].

[11] [2011] ECR I-08625 [91].

[12] Bently et al. (n 6) 1137.

[13] L’Oréal SA v Bellure NV (n 3) [50].

[14] [2018] EWCA Civ 2211, [102].

[15] Bently et al. (n 6) 1137.

[16] ibid.

[17] [2009] ECR I-03421, [59-60].

[18] Bently et al. (n 6) 1143.

[19] [2024] EWHC 2990.

[20] Thom Browne Inc v Adidas AG (n 19) [656], [672], [675].

[21] [2025] EWCA Civ 5.

[22] [2023] EWHC 1839.

[23] ibid [315].

[24] ibid [213].

[25] Lifestyle Equities v Royal County of Berkshire Polo Club Ltd (n 24).

[26] Thom Browne Inc v Adidas AG (n 19).

[27] Bently et al. (n 6) 1137.

[28] Argos Ltd v Argos Systems Inc (n 14).

[29] Thom Browne Inc v Adidas AG (n 19).

[30] Thatcher’s Cider Company Ltd v Aldi Stores Ltd (n 21).

[31] Copad v Christian Dior Couture (n 17).

[32] General Motors Corporation v Yplon SA (n 10).