Legal rulings: Nutriwomen and Bliss Brands challenged over copycat packaging

Copycat packaging has landed two manufacturers in hot water this month: one with the Advertising Regulatory Board (ARB), and another in the Johannesburg High Court. 

In the first case, the regulator’s appeals committee ruled against Nutriwomen, the manufacturer of the Dermacare range, after the company appealed against an earlier decision that its packaging was too similar to the popular CeraVe range, manufactured by L’Oréal South Africa. 

L’Oréal had originally complained to the ARB that Dermacare’s current packaging “substantially copies the packaging and get-ups of the complainant’s various CeraVe products and by extension, exploits the advertising goodwill attaching to the complainant’s packaging and get-up”.

It said CeraVe’s packaging is highly distinctive, recognised globally through significant advertising, including in South Africa, and that Nutriwomen, a competitor, had copied CeraVe with similar packaging, colour schemes, and product descriptions. L’Oréal said Nutriwomen had taken advantage of CeraVe’s established goodwill and created a misleading association that might confuse consumers about an affiliation between the brands, potentially damaging CeraVe’s reputation.

Both CeraVe and Nutriwomen’s products compete directly in the same stores, targeting the same consumer base for similar purposes. L’Oréal argued that Nutriwomen had intentionally mimicked CeraVe’s packaging, “deliberately seeking to ride on the coattails of the substantial and favourable reputation which the complainant has developed in its CeraVe packaging and get-up”. The French multinational also contended that it is the first brand to offer a full line of products containing the three ceramides that healthy skin needs and that “the CeraVe brand’s unique and exclusive combination of three scientifically identified essential skin identical ceramides, the blend of which is identical to the ceramides found naturally in skin, has been a major marketing point for the CeraVe brand and is found in every CeraVe product”. 

This imitation, they argue, violates the ARB Code, which deals with misleading advertising practices and brand imitation.

Nutriwomen, though, disputed the allegations, arguing that it had not copied L’Oréal’s distinctive V-shaped block design; that CeraVe’s packaging has not been in use long enough to establish advertising goodwill in South Africa; and that its layout and colour choices are common in the industry, therefore lacking uniqueness. Nutriwomen further argued the two brand names are clearly distinguishable on their respective products, that the items are not typically bought on impulse, and that there is no legal restriction on selling products that are similar or considered “dupes” of another brand.

In May, the ARB ruled that Nutriwomen’s packaging did indeed constitute an imitation of CeraVe’s, and that the range’s distinctive combination of design elements had achieved a level of recognition that justified protection under the regulator’s Code. Nutriwomen was ordered to update its Dermacare packaging within three months. Additionally, ARB members were advised to cease accepting advertisements or stocking any products with the existing Dermacare packaging from 16 August 2024.

Nutriwomen is not a member of the ARB. It also questioned the ARB’s authority, despite last year’s decisive Constitutional Court ruling, confirming the ARB’s right to rule on the advertising of non-members, in the fight between the regulator and Bliss Brands, the manufacturer of Securex soap and MAQ washing powder. Nutriwomen then took the matter on appeal and lost earlier this month. The ARB appeals committee ruled that the CeraVe and Dermacare products share significant similarities in colour, wording, design and container shape, suggesting Dermacare’s packaging was influenced by CeraVe after its launch in South Africa

Separately, Bliss Brands has just been handed a contempt-of-court ruling in the Johannesburg High Court, for flouting the ARB’s ruling that it should withdraw the packaging for its Securex soap, which the regulator had previously ruled was too similar to Colgate-Palmolive’s Protex soaps.

Gail Schimmel, the ARB’s CEO, explained that after the Concourt ruling, Bliss Brands was denied leave to appeal. Bliss took the matter on review, but the High Court not only found that the ARB’s decision was properly made, it became an order of the court. The board then gave Bliss Brands three months to change its packaging, but Bliss asked the board to hold off on executing its decision. It then sought an interdict to prevent the ARB from acting against it. Colgate later complained that Bliss had changed its packaging marginally and took the matter to court. 

“The court found Bliss in contempt and refused to hear the interdict application. It said while Bliss are in contempt of court, they cannot come to court with dirty hands. So as things stand at the moment, the ARB is of the view that we are not only allowed to but that we are obliged to carry out the sanctions of our breach,” Schimmel said.

Bliss has now been given 30 days in which to change its packaging. 

“It’s going to cost them a lot of money to change the packaging, but it’s arguably what should have happened four years ago. They have benefited from (Colgate’s) intellectual property, by infringing on its packaging for years.”

Daily Maverick asked Bliss for comment but was unsuccessful.

Nutriwomen has until 13 November to lodge a second appeal before the ARB. BM