Unfair competition Flashcards
(28 cards)
Marketing which creates confusion (UC)
- Art 6(2) UCPD
- Consumer protection
- All circumstances of the case to be taken into account
- Average consumer test
- No statutory exceptions
How does average consumer test apply in unfair competition and TM?
In a typical TM case, court compares TWO signs - technical exercise. In a classical likelihood situation in TM, average consumer test is not looked at.
Comparative advertising
Unfair competiton law: Arts 2c, 4 Misleading and Comparative Advertising Directive (MCAD)
Art 2(c) - is it comparative advertising? Art 4- is it permitted?
Criteria of Fairness in Art 4 MCAD
- Not misleading
- Goods/ services intended for the same purpose
- Objective comparison of material, relevant, verifiable and representative features
- Does not discredit or denigrate
- Product with GI may only be comapred to product of the same GI
- Does not take unfair advantage
- Does not present goods as imitations
- Does not cause confusion
L’Oreal v Bellure (Smell-a-likes case)
To determine whether use of a sign does take unfair advantage, a global assessment is necessary which takes into account:
- the strength of the mark’s reputation;
- the degree of distinctive character of the mark;
- the degree of similarity between marks at issue; and
- the degree of proximity of the goods and services concerned.
The fact that there is a likelihood of dilution or tarnishment of the mark may also be taken into account.
Article 2(c) MCAD - Definition of Comparative Advertising
“any advertising which explicitly or by implication identifies a competitior or goods or services offered by a competitor”
MCAD requires advertisers to make sure that their advertisements:
- are not misleading
- compare products for the same purpose
- objectively comapre important features
- do not discredit other companies TM
- do not create confusion among traders
Overlapping areas between UC and copyright
- Product shapes below originality level
- Misrepresentation about author/ producer/ producer, reputation of original work
- Information
- Inestments outside the scope of neighbouring rights
- Character merchandising
District Court of Glostrup (Denmark), Ai Weiwei v Volkswagen (IP
Kat of 12 January 2020)
Ai Weiwei claimed that Volkswagen’s photo violated his rights as an artist, damaged his credibility, and, worst of all, damaged the artwork itself, as well as the general understanding of human rights and the public’s view of refugees and their situation. The court ruled in favor of Ai Weiwei, agreeing both that the photo had clearly been used for marketing purposes and that Volkswagen had free-ridden on the Ai Weiwei brand.
Misappropriation = theft
• Making use of a competitor‘s trade values in an
unfair way (“reaping without sowing“)
• Less international consensus
• Extended protection on TMs with a reputation in EU law
• Comparative advertising unlawful when it takes
unfair advantage
• But no general protection against misappropriation
in EU law, and differences between the member
states
Unfair competition model (IRE)(UK)
- no UC law
- but economic torts
- consumer protection statutes
- strong role of self-regulation
Unfair competition model (SWE)(DEN)
- unitary market practices law
- monism
- private law remedies +
ombudsman
Unfair competition model (POL)
- unitary act against UC
- act against unfair
commercial practices - mainly private law
remedies
Unfair competition model (HUN)(LIT)
- unitary competition act
- consumer protection
statutes - competition authority
Unfair competition model (FR)(IT)
- dualism: civil law +
consumer protection law - consumer protection law
= mainly criminal law
Unfair competition model (AT)(DE)(ESP)
- unitary act against UC
- monism
- private law remedies
Directive 2005/29/EC – “Unfair
Commercial Practices Directive”
(amended 2019)
consumer protection (B2C) against
unfair commercial practices, in
particular misleading and aggressive
practices
Directive 2006/114/EC
concerning misleading and
comparative advertising
protection of traders (B2B)
against misleading and unlawful
comparative advertising
Other important UC regulations & directives
• IP directives, particularly on TMs and designs
• Trade secrets directive (2016)
• Directive on price indications (1998)
• General Data Protection Regulation (2016/2018) and Directive on privacy and electronic
communications (2002)
• Regulation on consumer protection cooperation (2004)
• Media-specific directives
- Audiovisual Media Services Directive (1989 / 2010 / 2018)
- Directive on electronic commerce (2000)
• Product-specific regulations and directives
- Directive on tobacco advertising (2003) and Tobacco products directive (2014)
- Many provisions on labelling, duties of information and product safety
Unharmonised areas
- Unregistered TMs, trade names and other signs
- Protection of goodwill outside TM law and comparative advertising
- Denigration / trade libel
- Imitation of products and services outside IP law
- Interference with a competitor‘s business
- Interference with contractual relations
- Infringement of a statutory provision
Differences between UC and IP law
• UC law does not grant property rights
• UC law is tort law, not property law
• UC law may protect consumers directly
• UC law may be enforceable by consumers, consumer organisations or
administrative authorities
• The key notion of UC law = fairness is more flexible than the rules of IP law
Similarities in UC and IP law
- UC law may protect goodwill / business values
- UC law is sometimes regarded as a part of industrial property law
- IP owners often rely on both IP and UC in order to enforce their rights
- IP rights and UC law may overlap
imitation of packaging = lookalike products
• General agreement: UC law can protect against confusion
- e.g. passing off (ENG), § 4 No 3 (a) DE UWG, Art 13 PL ZNKU
- Issue 1: identical reproduction of shape + labelling
- Issue 2: confusion after monopoly period
• Additional protection against misappropriation?
- Yes: France (parasitisme), Germany (§ 4 No 3 (a) UWG)), no preemption by design law
- No: England (Jif and Hodgkinson cases)
- Perhaps: Poland (Art 13 and Art 3 (1) ZNKU)
Likelihood of confusion (TM law)
• Arts 10 (2)(b) TMD = 9 (2)(b) EUTMR • Primarily protects TM owners • Comparison of registered TM with sign • Similarity of signs, goods/services, distinctiveness • Earlier TM wins • Statutory exceptions
