For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

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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