For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 11 June 2013

Once you've seen one, you've seen them all: but this report on lookalikes is different

Sometimes the lookalike
is as good as the original ...
It's no secret that, even as they fight their never-ending battle with real fakes for the hearts [and pockets, adds Merpel] of consumers, brand owners continue to tussle with ever-present and generally unwelcome competition from lookalikes. This battle has not just been through the courts: it has been on the policy and business agenda for at least two decades. Well-known brands, and brand-owners' groups, have long advocated specific and adequate protection against lookalikes under United Kingdom law, particularly in the context of possible business-to-business harm. In response, successive governments have replied with the same refrain: "first show us the evidence

'The Impact of Lookalikes', a research report that was commissioned by the United Kingdom Intellectual Property Office (IPO), attempts to exhaust the topic, providing a mass of data, cases and even a new set of working definitions. At 400 pages it will pretty well exhaust your Ryanair hand-luggage too. You can download it here, but the IPO advises against printing it out in case you exhaust your printer cartridge.
1.The impact of lookalikes: main report (142 pages)
2 The impact of lookalikes: annexes I to III (47 pages)
3. The impact of lookalikes: appendices A-F (81 pages)
4. The impact of lookalikes: appendices G-J (125 pages)
The legal analysis is summed up in just three succinct paragraphs:
22. In none of the three jurisdictions examined - the UK, Germany and the United States – was the legal position of lookalikes particularly clear. Nevertheless, at the interim stage, there is a perception that a claimant is more likely to be successful in the favourable German forum than in either of the other two countries [the same perception that Germany is a favourable jurisdiction may be gleaned from trade mark law and  might be something to do with the notion of confusion being traditionally seen as a matter of fact in the US and UK but as a matter of law in Germany].  
23. It is probable that the prevention of certain lookalikes is within the scope of the Unfair Commercial Practices Directive (2005/29/EC).[This Kat concurs, having sought to make this point in the past] Under this assumption, the United Kingdom may not be free to legislate to further prevent lookalikes save in business-to-business transactions. However, it would also mean that certain lookalikes are already unlawful under the Consumer Protection from Unfair Trading Regulations 2008. 
24. Accordingly, if there is a restriction on legislation in relation to lookalikes, a private right of action under the Consumer Protection from Trading Regulations 2008 would be permitted under the Unfair Commercial Practices Directive.
As for the rest, the IPKat was treated to a handy summary from law firm Wragge which states, inter alia:
• Some consumers do believe that similar looking products have similar characteristics and originate form a similar source; [while this is not exactly news, it's comforting to know that this project has reached such a conclusion. If it hadn't, we'd start worrying about the rest of it]

• A high number of consumers felt disadvantaged by the accidental purchase of a lookalike, but a substantial number saw it as an advantage; [this looks like the 'brand promise versus bargain price' divide]

• Only in a limited number of categories was there an association between a reduction in the sales of the brand leader and an increase in the sale of lookalikes; and [showing the power of brand loyalty, or do consumers buy the brand leader because they confuse it with the lookalike ...?]

• There is a fine line between confusing packaging and the use of "generic cues" to signal to customers. [true, but what makes generic cues generic in the first place? Often it's the investment by the brand owners]
The research suggests a statutory definition of a lookalike as "good 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." [adopting a definition might stop people arguing over the definition -- but it's only really important if a right is attached to it]
The IPO's report is far too long for this Kat to digest immediately, so he appreciates readers' comments and constructive criticisms.

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