In terms of practical lessons learned, said Antony, we should consider the following:
1. Don't be put off trying to get together a passing-off claim, even if you are also running a trade mark infringement action. Passing off does reach areas that trade mark registrations can't touch.Antony was succeeded by Christopher Stothers (Arnold & Porter (UK) LLP), who addressed "Importation and Sale of Third Party Brands: Issues involving Grey Goods". Christopher reminded us all that free movement of goods and the regulation of anticompetitive practices, which are often lumped together under the same heading, are different bodies of law and affect intellectual property in different ways. He then gave a broad review of the principal CJEU decisions as they relate to the sale and importation of goods from one country to another within the EU and from outside it.
2. Remember that consumer survey are either dead or nearly dead. In either event they do not appear to be particularly popular with the judiciary.
3. Trust your own judgement: your hunches are as good as counsel's.
4. Even with a brainy judge, litigation is still a gamble.
As for problems faced by retailers and how to avoid them, the main issues relate to depressed prices and lost sales, as parallel imported goods squeeze sales and profits. Anticompetitive agreements with suppliers may leave retailers who enter them in the firing line, with risk of being fined. Parallel traders may try to trap retailers into revealing that they have entered into anticompetitive agreements.
Alex Carter-Silk (Speechly Bircham LLP), on heuristics and lookalike products. Essentially, how do you prove confusion, particularly when the British judiciary have set their faces against survey evidence and against the use of surveys in order to select witnesses? You can't litigate confusion unless you know what confusion means, he said, and this is where heuristic triggers come in. For example, Alex asked the registrants to name an airline associated with the colour red: immediately a host of voices called out "Virgin!" This, he explained, was a learned response -- the sort of response that consumers can be trained to make, and what both branding and the hijacking of the consumer's subconscious are all about.
Sainsbury's or a downmarket one like Aldi?) Alex then mentioned his research on lookalikes with the British Brands Group, the curious notion that lookalikes can actually emphasise the value of the brand they emulate and the annoying reality that the government seems to view lookalikes as a non-damaging addition to consumer choice, while the truth is that it is products that you can distinguish from one another that facility choice, it being the fact that they can be differentiated that enables consumers to select between them.