Lookalikes
An unfair practice and unfair competition?
Professor Johanna Gibson
Herchel Smith Professor of Intellectual Property Law
Competition Law Association, 13 March 2014
The Lookalike Effect?
Relatively speaking
• Quality
• Origin
• Experience
Products and Consumers
Consumer Detriment
• Individual consumers
and purchasing
decisions
• Individual consumers
and product availability
• Availability, accessibility
of information
Intentional Purchases
• Deliberate
purchasing of
lookalike product
– Perception of
common origin?
– Perception of
relationship to
branded product?
Packaging
• Cues and
signalling
–Descriptive
–Functional
–Generic
Products and Competitors
Business to Business
• Decreased
innovation?
• Increased
costs?
– Packaging
– Sales
diversion
– Advertising
Legislate?
Legislative Policy
Confused as to Confusion
• Confusion as to product
or confusion as to
family of products?
– Are we asking the wrong
questions?
– Substitution of product
or indeed perceived
continued relationship
to brand?
Giving Definition
Lookalikes can be
appropriately described
as “goods which by virtue
of their name, shape,
colour, packaging or
labelling or any
combination thereof, are
similar in overall
appearance to the goods;
but excluding any of
those things where they
are descriptive, functional
or commonplace.
Unfair Advantage
Investment
Effort
Experience
Unfair Competition and Paris
• Paris Convention, Article 10bis, requirement for
contracting parties to prevent unfair competition.
– Therefore also an obligation under TRIPS Agreement, art 2(1)
– Therefore also an EU obligation, EEA Agreement, Protocol 28,
art 5.
Compliance
• Trade Descriptions
Act 1968 (and
predecessors)
• UK implementing
law for the Unfair
Commercial
Practices Directive
2005/29/EC
Enforcement
• But if enforcement
is not effective then
UK has not
implemented
Freedom to Legislate
• Unfair Commercial Practices Directive (2005/29) (UCPD) –
maximal measure
• Consumer Protection from Unfair Trading Regulations 2008
Private Enforcement
• UCPD leaves it up to Member
States to determine how to
enforce the Directive
• Private right of action:
“unintended and adverse
consequences” and
uncertainty?
• Compare Ireland – Consumer
Protection Act 2007
Thank you