Battle of the beauty dupes: courts side with e.l.f. over Benefit

Late last year, a judge in the Northern District of California found e.l.f. Cosmetics did not infringe on Benefit Cosmetics’ trademarks or trade dress when e.l.f. created what is commonly known in the beauty industry as a duplicate or “dupe” product. A “dupe” product is one inspired by a more expensive and successful product. In this case, e.l.f. admitted it took inspiration from the successful ‘Benefit Roller Lash Mascara.’ E.l.f. named its “dupe” mascara ‘Lash ‘N Roll,’ which Benefit claims was a combination of its trademarks ROLLER LASH and HOOK N’ ROLL. E.l.f. claimed that the name was chosen to align with its music-themed mascara products like ‘Lash It Loud’ and ‘Lash Beats.’

In ruling against Benefit and in favor of e.l.f, the court found that the Benefit trademarks are valid and enforceable. However, Benefit was unable to show a likelihood of confusion between Benefit’s and e.l.f.’s word marks. The court’s rationale for the lack of confusion was due to the dissimilarity of the commercial impression of the marks, the lack of evidence of any actual confusion, given the coexistence of the marks in the marketplace for two years, and the sophistication of the beauty purchaser.

E.l.f. acknowledged that it was inspired by Benefit’s product, but the court determined that inspiration alone does not equate to an intent to deceive the public. The ruling also noted the significant price difference – e.l.f.’s mascara costs USD 6, whereas Benefit’s sells for USD 29 – also played a role in the analysis. But, isn’t this always the case with a “dupe” product? How would a party prove intent to deceive?

The answer to that question may be in the court’s analysis of the trade dress infringement. The court found Benefit’s trade dress, when taken as a whole, is commercially strong, non-generic, and non-functional, with an acquired secondary meaning due to its substantial advertising and promotion investment. However, in a circular argument, the court says that “[e]vidence of copying also is ‘relevant to a determination of secondary meaning.’” This means that while copying alone is not necessarily unlawful, it can support a claim that the original product has built strong brand recognition over time.

Benefit’s trade dress consists of (1) a pink top, (2) a black base, and (3) pink lettering on the black portion that matches the top. The packaging includes a textured design on the top and a collar between the top and base. The ‘Roller Lash’ name appears in script, with the Benefit house mark appearing in tiny letters above. The court found that e.l.f.’s packaging differed in key ways. While it also features a black base and pink top, the shade of pink is different, the top is smooth rather than textured, and there is no collar between the top and bottom. Most notably, e.l.f.’s branding is prominently displayed as a secondary mark on the base (see below). These distinctions were critical to the court’s finding of no likelihood of confusion.

This decision suggests that companies creating “dupe” products may avoid trademark infringement liability by making strategic IP modifications. While Benefit was unsuccessful, other brands may see a different result by pursuing alternate legal arguments or introducing consumer confusion evidence, including surveys and other evidence of an intent to deceive, which was not present in this case.

For brand owners seeking stronger protections against “dupes”, proactive steps are essential. Ensuring all IP rights are properly registered and protected is crucial. Keeping records of actual confusion can bolster enforcement efforts, and conducting consumer surveys can provide valuable evidence in legal disputes. Companies might also consider unique packaging innovations and exclusive product formulations to help protect their brands.

As the beauty industry continues to evolve, “dupe” products will likely remain a contentious issue. Whether courts continue to rule in favor of “dupe” brands or shift toward stronger protections for original products will depend not only on the facts of each case but also on how future cases are argued and the strength of the evidence presented.

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