When Trademarks Overlap With Other IP Rights: conference report 7

Apologies: I couldn't make detailed notes on this session: a combination of screen-freezes and poor internet connection proved too great a challenge ...

"Fortunately we no longer live in Feudal times", said Professor Anselm Kamperman Sanders in his opening comments on the session entitled "Trademarks and Unfair Competition", moderated by Axel Nordemann. Anselm gave a masterly overview of the conception, birth and early years of the concept of unfair competition from even before the creation of the European common market. Anselm spoke warmly of the role played by Rudolf Callmann and the architecture of a set of laws addressing unjust enrichment and the protection of consumer choice as well as the prevention of unfair competition; he believed that a small amount of confusion was not necessarily harmful if consumers learned from it and if it also ultimately enhanced competition.

After also mentioning the contributions of INTA "founding father" Stephen Ladas and the first WIPO Director General Georg Bodenhausen, Anselm moved on to present times. How things have changed after the enactment of the EU legislation on trade marks and its interpretation by the Court of Justice of the European Union (CJEU), he observed. The CJEU had to consider whether its jurisdiction was confined within the walls of that legislation or whether it could also move beyond it to the interface of trade mark law and unfair competition, especially with regard to issues like comparative advertising and free-riding, where competence to visit national law principles has been assumed, citing instances such as Case C-487/07 L'Oréal and Others v Bellure [on which see, eg, Katposts here and here].

Next to speak was Gordian Hasselblatt (CMS Hasche Sigle), who discussed the "protective purpose" of trade marks and their relation to principles of unfair competition. As trade mark protection has expanded to embrace the protection of well known marks where there is no risk of confusion, it has provided the sort of protection which was once within the scope of unfair competition law.

Gordian also took a look at lookalikes: are they automatically unfair and unfair competition? They they may be simply trying to do is to grasp the total look and feel and create the same overall impression without actually infringing trade mark rights: they may be infringing design rights and copyright in the copied product.  Gordian looked at some German case law, including the Snickers/Winergy packaging dispute displayed on the left and concluded that, when it comes to the application of unfair competition principles, decisions can be unpredictable -- so trade mark protection, where available, is always best.  A holistic approach is needed, embracing all IP rights and unfair competition law though, in an ideal world, IP and unfair competition law would go hand in hand.

Fellow Kat Neil was next to speak, looking at the common law (US and English) position on unfair competition.  After professing not to understand the concept of unfair competition at all, Neil took us through the doctrinal split between the economists of Harvard (who believed trade marks to be monopoly-inducing monsters that should be shackled and subject to compulsory licensing when suiccessful) and Chicago (trade marks are great: they provide information for consumers, reduce search costs and promote innovation). In the event it was the latter who prevailed.

Turning to s 43(1) of the Lanham Act, Neil showed how far it protects unregistered marks and trade dress, sending out a message that trade marks are liked, plaintiffs are welcomed -- with just one downside: it doesn't offer any opportunities for injured consumers to sue [citing the recent Neil-Jeremy Katpost on the consumer protection of trade marks, here]. Looking at case law, Neil then outlined misappropriation doctrine: was it an alternative basis for trade mark protection: its locus classicus, the US Supreme Court decision in International News Service v Associated Press has had "a pretty rocky last 90 years", he noted. But are we seeing a move in England from misrepresentation to misappropriation doctrine? He cited the VODKAT and Rihanna cases [Katposts here and here] which appear to suggest that case law has not actually moved very far from its original position.

Next to speak was Myrtha Hurtado Rivas (Novartis AG), who gave a strategic overview of the trade mark v unfair competition position from the standpoint of a business that had to make decisions as to how -- and where -- to enforce its rights and protect its interests in the Europe of today -- and beyond. Issues such as local variations in evidential and procedural requirements and choice of witnesses must be addressed. For a pharmaceutical company, the most sensitive point of time is the moment its products come off patent, when branding and trade dress are of critical importance.  Myrtha cited the specific example of EXELON patches for the delivery of a treatment for Alzheimer's, which is currently the subject of ongoing litigation both in Europe and beyond it. Gaining evidence of distinctiveness of a patch which is contained within both primary and secondary packaging is quite a complex exercise, but this had to be done before proceedings could be brought for trade mark infringement and unfair competition against a manufacturer of a lookalike generic product, showing a Hamburg court that a proportion of medical practitioners could themselves be confused.