News & Insights

Apparently, Frank Green water bottles carry a bit of brand cachet. But really, who is going to buy a $60 real one when a $15 Kmart bottle and an engraver will give you a close imitation?

According to recent reports, that’s what one innovative DIYer has done. Though in her case, she has gone for a cheeky “FAKE GREEN” engraving that mirrors the font of the genuine “FRANK GREEN” trade mark. She has even put in a dot where Frank Green has its “®” indicator.

Apparently, the handiwork was a big hit on the “Kmart Hacks and Décor” Facebook group. According to the article, some group members asked whether they could buy the labels and whether the bottles were for sale.

But is this Frank Green dupe legal?

If you’re doing this for your own amusement and personal use, this is perfectly legal. However, selling them isn’t going to be a good idea, if the creator is ever tempted by the social media interest (there is no suggestion in the article that she intends to commercialise them).

Trade mark infringement

The “FRANK GREEN” logo in its distinctive script is a registered trade mark in Australia, with a further application currently accepted for registration and awaiting advertisement. When registered, the latter will be backdated to its original 22 February 2023 filing date and can then be enforced for any conduct on or after that date.

The “FAKE GREEN” logo, particularly mirroring the original’s script, is likely to be deemed deceptively similar to the registered mark, and would be infringing. It was the subject of some discussion internally with a strong dissenting view, but the majority of us thought it was too similar. It’s a good example of the value of registering a trade mark in its stylised form, as a plain text “FRANK GREEN” registered trade mark would most likely not be deceptively similar to “FAKE GREEN”.

Given the intentional imitation of the original, such infringement would likely incur an order for additional damages under section126(2)(a) of the Trade Marks Act 1995 (Cth) for flagrancy of infringement.

But for personal purposes? The “FAKE GREEN” stylised name is not being used “as a trade mark”. That is, as a sign to differentiate one trader’s goods from another trader’s goods. So no infringement.

Misleading and deceptive conduct

With “FRANK GREEN” being such a well-known name for drink containers, using similar trade get-up commercially is likely to mislead and deceive, contrary to section 18 of the Australian Consumer Law. It would also likely constitute a false or misleading representation as to standard, quality, and model of the bottle, and of its approval and characteristics, also contravening section 29(1)(a) and (g).

Again, there was some disagreement internally about this, which just shows what a fraught field this is to navigate. Retailers like Kmart and Aldi are known to have their own spin on designer or brand-name products and customers might expect that the $15 Kmart bottle is not a $60 Frank Green original. But that would be very fact-dependant, arising from the evidence available.

Subject to the above comments, if Frank Green can prove the likelihood of loss, such conduct would also likely constitute the commission of the tort of passing off.

The take away

Some basic lessons:

1. Kmart can be a great source of bargain products that look very similar to expensive brand name alternatives.
2. Sticking the genuine or look-alike trade marks onto the look-alike products might be fun, but if done commercially can lead to serious legal trouble.
3. If you’re the one actually looking to create the look-alike products, be sure that the originals are not subject to design, patent or trade mark registration, or copyright, that would prohibit such imitation. Don’t be fooled: Kmart is very careful with this. If you want to imitate, you need to be careful too.
4. If you want to avoid look-alike products springboarding off your hard work, speak to an IP specialist who can assist you in implementing a strong IP protection strategy in a commercially relevant manner.

The Macpherson Kelley IP team regularly advises clients on how to minimise look-alikes entering the market, and infringement risks for new products, including undertaking design, patent and trade mark searches to identify how products are protected from imitation. Whether you’re the innovator or the imitator, come speak with us.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.