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Friday, 19 January 2007

Quick question on passing off/unfair competition


IPKat team member Jeremy has been pondering on something.

In all his long years he doesn't remember ever seeing a reported decision in which an English court has been asked to make a declaration that an applicant's actual or proposed activities do NOT constitute an act of passing off, in a situation in which no passing off action has been threatened or is impending. Is this because it can't be done, or because no-one has ever done it? In jurisdictions in which unfair competition principles apply instead of passing off, are things any different?

If you either know, or think you know, the answer, can you please let him know? Answers will be posted on this blog.

5 comments:

SMP said...

In Portugal, it would be abstractly possible to request of the court a declaration stating that the applicant is not praticising acts of unfair competition (provided, of course, you currently identify the economic agent you want the declaration to relate to and the type of unfair competition you are NOT doing). In fact, you can obtain such a declaration for any kind of situation under civil law.
However, I do not believe anyone has ever requested, or obtained, such a declaration in the specific issue of unfair competition.

Anonymous said...

It can be done as there is a general discretion to grant a declaration (of course subject to the duty to act judicially).

However, it will rarely happen unless a positive assertion of passing off has been made. The courts don't decide moot points.

See the recent case of Point Solutions v Focus in which a negative declaration was sought in relation to copyright infringement (the position will be the same when it comes to passing off). The declaration was refused.

All the relevant authorities were reviewed in paras 62-69.
http://www.bailii.org/ew/cases/EWHC/Ch/2005/3096.html

Jeremy said...

Thanks for both of these comments, which I am adding to my small but growing collection of thoughts on the subject.

geeklawyer said...

Anonymous is right.

The only realistic scenario, and I have dealt with this situation, is where a determined applicant is nervous of a rich and aggressive potential opponent. Let us say, ooh e.g., Easygroup.

However, for a judicial declaration, one would almost always need to join an opponent as a respondent which would risk triggering full on litigation: the very thing one was hoping to avoid. I suspect this is why it is not usually done.

Jeremy said...

Michalis Kosmopoulos, from Greece, has just emailed me this: "Under Greek Unfair Competition law, a person or entity may file an action, asking from the Court (in this case the Civil Multi-Member Court of First Instance) to render a decision-diagnosis, recognizing that its behavior does not constitute unfair competition against a third party. This is a kind of action provided by the Greek Civil Procedure Code for all civil law disputes. However the claimant has to prove a legitimate interest. A party would have a legitimate interest if, for example, the other party has sent a cease and desist letter alleging unfair competition, or if a temporary injunction has been issued against him. I can not think right now of a reported case, but it can surely be done".

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