The conflict between e.l.f. Cosmetics and Benefit Cosmetics stems from a common practice in the cosmetics industry: the creation of so-called “dupe” products. A “dupe” is a product inspired by a competitor’s more expensive and successful cosmetic, offering similar effects at a much lower price. In this specific case, e.l.f. openly admitted that it drew inspiration from Benefit’s successful mascara called “Roller Lash.” E.l.f. named its product “Lash ‘N Roll,” which, according to Benefit, was a combination of their “ROLLER LASH” and “HOOK N’ ROLL” trademarks. E.l.f. representatives argued that the name was chosen to fit in with their line of mascaras with a musical theme, such as “Lash It Loud” and “Lash Beats.” This case perfectly illustrates the fine line between inspiration and imitation, which is often the subject of disputes in the cosmetics industry. The price difference between the products was significant – the e.l.f. mascara cost $6, while the Benefit product was priced at $29, which is typical of the relationship between an original product and its “dupe.”
In its ruling in favor of e.l.f., the court found that Benefit’s trademarks are valid and protected by law. However, the key factor in this case was the lack of evidence of a likelihood of consumer confusion. The court justified its finding that there was no risk of misleading consumers with several important arguments. First, it pointed to the differences in the overall commercial impression created by the two trademarks. Second, a significant factor was the lack of any evidence of actual consumer confusion, despite the products having coexisted in the market for two years. Third, the court took into account the high level of awareness among cosmetic consumers, who typically make informed purchasing decisions. Furthermore, the court noted that simply admitting to being inspired by a competitor’s product is not the same as intending to mislead consumers. In its analysis of the trade dress, the court found that while Benefit’s packaging design is distinctive and has acquired so-called “secondary meaning” through significant investment in advertising and promotion, the e.l.f. product’s packaging differed in key aspects, which minimized the risk of confusion.
The court’s decision in the e.l.f. versus Benefit case has far-reaching implications for companies producing so-called “dupe” cosmetics. The ruling suggests that companies creating cheaper alternatives to popular products may be able to avoid liability for trademark infringement by introducing strategic modifications to their products. While in the case of e.l.f. versus Benefit, the court sided with the “dupe” manufacturer, this does not automatically grant permission for unrestricted copying. Other brands may face a different verdict if the injured party presents alternative legal arguments or introduces evidence of consumer deception, such as market research or other evidence of intent to deceive, which was lacking in the case at hand. This is particularly relevant in the context of increasing competition in the cosmetics industry, where more and more companies are choosing to create cheaper alternatives to bestselling products.
For owners of cosmetic brands, especially those creating innovative and popular products, the ruling in the e.l.f. versus Benefit case serves as an important signal to strengthen the protection of their intellectual property rights. It is essential to take proactive steps to protect themselves against imitation.
As the cosmetics industry evolves, “dupe” products will likely remain a controversial topic, and whether courts will continue to rule in favor of brands creating “duplicates” or lean towards stronger protection of original products will depend not only on the facts of each case but also on the strength of the evidence presented and the manner of argumentation.
Fill out the form and we will get back to you within the next … with a preliminary quote.
