Two different approaches of the regulations protecting agains unfair competition:
General clause in line with Paris Convention
art. 10bis combined with specific examples or cases
- E.g. Germany, Poland, Austria, Spain. Switzerland, Japan, Republic of Korea, China, Colombia, etc…
General tort law or law against “passing off” and special laws on trade secrets, advertising, consumer protection
E.g. France, Italy (civil code)
E.g. United Kingdom + common law jurisdictions
Mixed approach
USA
The Lanham Act plus passing off and several other regulations (FTC Act, Consumer protection laws)
United Kindom
Arsenal v. Reed (2003 ETMR 73 CA at Para. 70)
What it is passing off ?
illegal type of unfair competition whereby a business does something that the public would reasonably believe to be related to the activities of a different business such that this second business suffers damages as a result
Germany. This list codifies the so far case law:
This list codifies the so far case law:
- Unfairly influencing the purchasing decisions of consumers.
- Denigrating the business of a competitor
- Making any false allegation about a competitor that is liable to discredit his business
- Offering goods and services that imitate those of a competitor
(a) where customers are avoidably deceived as to trade-origin.
(b) where the imitation takes undue advantage of or causes detriment to the reputation of the imitated Products
(c) where illegitimately obtained knowledge or documents essential for the purpose of imitation are utilized. - Determined obstruction of a competitor’s participation in the market place.
- The breach of any statutory provision intended to regulate market behaviour in the interests of market participants.
- Intrusive advertising
This list codifies the so far case law:
This list codifies the so far case law:
- Unfairly influencing the purchasing decisions of consumers.
- Denigrating the business of a competitor
- Making any false allegation about a competitor that is liable to discredit his business
- Offering goods and services that imitate those of a competitor
(a) where customers are avoidably deceived as to trade-origin.
USA.
43 (a) 1 of the Lanham Act
False designations of origin and false description forbidden
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or…
(b) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
USA.
43 (a) 1 of the Lanham Act
False designations of origin and false description forbidden
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
45 FTC Act
Unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce are hereby declared unlawful.
International News Service v Associated press, 248 U.S. 215 (1918)
misappropriation of news = reaping without sowing
Bonito Boats, Inc v Thunder Craft Boats, inc
the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself, and the very lifeblood of a competitive economy
1
imitation = lifeblood of a competitive economy
EU
There are not unitary comprehensive competition law!
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EU Directive 2006/114/EC of The European parliament and of the council of 12 December 2006 concerning misleading and comparative advertising
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EU Directive 2006/114/EC of The european parliament and of the council of 12 December 2006 concerning misleading and comparative advertising
The directive gives us a set of criteria to qualify given advertising as
- misleading
the characteristics of the goods or services (availability, nature or composition, method of manufacture or provision, origin, etc) the results to be expected from their use, and the results of quality checks carried
- the price or the manner in which the price is calculated
the conditions governing the supply of the goods or services; the nature, qualities and rights of the advertiser (identity and assets, qualifications, intellectual property rights, etc)
Comparisons should:
- relate to goods or services which meet the same needs or are intended for the same purpose
- relate to products with the same designation of origin
- deal objectively with the material, relevant, verifiable and representative features of those goods or services, which may include price
- avoid creating confusion between traders, and should not discredit, imitate or take advantage of the trade mark or trade names of a competitor.
The directive defines 2 specific categories of the commercial practices as particularly unfair:
- misleading commercial practices (by action or omission) and
- aggressive commercial practices
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IP directives, particularly on TMs and designs
- Trade secrets directive (2016)
- Directive on price indications (1998)
- Directive on privacy and electronic communications (2002)
- Regulation on consumer protection cooperation (2004)
Media -specific directives
- Audivisual Media Services Directive (1989/2010)
- Directive on electronic commerce (2000)
Product specific regulations and directives
- Directive on tobacco advertising (2003)
- Many provisions on labeling, duties or information and product safety
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Unharmonised areas
- Denigration/trade libel
- Protection of goodwill outside TM law and comparative advertising
- Imitation of products and services outside IP law
- Interference with a competitor’s business
- Interference with contractual relations
- Infringement of a statutory provision
